WIPO Domain Name Decision D2008-1122 for wfli.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Western Florida Lighting, Inc. v. Samantha Ramirez, SamiRami, SESCO Lighting, Inc., and Cynthia Parker-Chillemi

Case No. D2008-1122

 

1. The Parties

The Complainant is Western Florida Lighting Inc., New Port Richey, Florida, United States of America, represented by Sponsler, Bennett, Jacobs & Adams P.A., United States of America.

The Respondents are as follows:

Samantha Ramirez and SamiRami, Weston, Florida, United States of America, represented by Todd M. Hoepker, United States of America;

SESCO Lighting, Inc., Winter Park, Florida, United States of America, represented by David S. Wood, United States of America;

Cynthia Parker-Chillemi, Port St. Lucie, Florida, United States of America, represented by Todd M. Hoepker, United States of America.

 

2. The Domain Name and Registrar

The disputed Domain Name is registered with NameSecure, LLC, a wholly owned subsidiary of Network Solutions LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2008. On July 24, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 28, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondents Samantha Ramirez and SamiRami are listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 31, 2008. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2008. On August 26, 2008, a Response was filed with the Center on behalf of the Respondents Samantha Ramirez and SamiRami, a separate Response was filed on behalf of the Respondent Cynthia Parker-Chillemi, and the Respondent SESCO Lighting, Inc. (“SESCO”) filed a document entitled “Motion to Terminate Administrative Proceeding”, which SESCO characterized in a later submission as “its response to the Amended Complaint”.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 4, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant and the Respondent SESCO both submitted supplemental filings, which are discussed further below.

 

4. Factual Background

The Complainant Western Florida Lighting, Inc. is a Florida corporation that acts as a manufacturer's representative in selling, installing, and servicing commercial, industrial, institutional, and residential lighting fixtures. The Complainant states that it was incorporated in January 1980 as WFLI, Inc. and changed its name to the current form later that year. The Complainant operates a website at “”. According to the Complainant's website, the Complainant provides services in much of the state of Florida. Court papers provided with the Complaint indicate that the majority of the Complainant's customers are outside the state of Florida.

The Complainant claims that it has used the mark WFLI since 1980. The mark is identical to the original name of the corporation, and it represents the initial letters of the company name since the name change in that year.

The Respondents do not dispute the Complainant's assertions that it advertises its WFLI mark in industry publications and at trade shows and that the Complainant regularly receives business correspondence and contractual documents denominating the Complainant as WFLI.

WFLI is not a nationally registered mark. The Complainant registered WFLI as a service mark in the state of Florida on October 27, 2000. The registration, number T00000001164, is for use of the mark in association with “manufacturer's representative services for commercial, industrial, institutional and residential lighting”, showing first use in Florida on February 1, 1980.

The Domain Name was initially registered on May 4, 2000. On the following day, according to the Registrar's Whois database, two other domain names were registered with the same registrar, using variations on the Complainant's name: and . A printout from the Registrar's Whois database dated December 5, 2000 shows that the Domain Name was registered in the name of the Respondent SESCO, with “Cynthia Parker” listed as the administrative contact.

The Complainant alleges that in September, October, and November 2000 the Domain Name and the other two domain names based on the Complainant's name redirected Internet users to a website operated by the Respondent SESCO at “”. (The domain name currently redirects Internet users to SESCO's website at “”.)

Counsel for the Complainant contacted counsel for the Respondent SESCO in November 2000. The Complaint attaches a letter dated November 13, 2000 from SESCO's counsel to the Complainant's counsel. In substantial part, it reads as follows:

“As I told you in my telephone conversation with you this date, Sesco has informed me of their intentions to cease all commercial activity in regard to the domain name “www.”.

“In regard to your request to assign this domain name to Western Florida Lighting, Sesco has instructed me to inform you that they are not inclined to do so at this time. If WFLI wants to acquire this website, they should put together a proposal and forward it to me and I will be more than happy to discuss it with the Board of Directors of Sesco.”

The Complainant filed a UDRP complaint with the Center but withdrew it on reaching an agreement with SESCO. According to the Complainant, the agreement entailed SESCO redirecting traffic from the Domain Name to the Complainant's website at “” until the Domain Name registration expired in May 2002. The Respondent SESCO, in the Answer it filed in the federal litigation, acknowledged that a settlement agreement was reached but stated, without further explanation, that the Complainant mischaracterized the terms of the settlement.

The Complainant alleges that a SESCO employee, the Respondent Parker-Chillemi, was designated as the person responsible for effecting the transfer of the Domain Name to the Complainant in May 2002 and that she did not do so. Instead, the Complainant asserts that the Domain Name registration was renewed in the names of the Respondents Samantha Ramirez and SamiRami Ind., as reflected in a printout from the Registrar's Whois database dated May 20, 2008. Printouts from the same database on the same date indicate that the two other domain names apparently making use of the Complainant's name, and , were also registered in the names of Samantha Ramirez and SamiRami Ind. by that time. All three registrations display the address of the Registrar's domain privacy service in Herndon, Virginia, United States of the America. The abbreviation “Ind.” does not currently appear in the name of the registrant of the Domain Name or of the other two domain names.

The Complainant says that it discovered in April 2008 that the Domain Name resolved to a website headed “Freedom” and “Coming out”, with content concerning lesbian, gay, bisexual, and transgendered persons. Screen shots are attached to the Complaint.

The Complainant reports unsuccessful attempts to negotiate with the Respondent SESCO concerning this use of the Domain Name. Ultimately, the Complainant filed suit in Florida against the Respondents SESCO and Parker-Chillemi, alleging cyberpiracy under federal law, trademark infringement and dilution under Florida law, and unfair competition under common law and the Florida Deceptive Trade Practices Act. Western Florida Lighting, Inc., v. Sesco Lighting, Inc. and Cynthia Parker Chillemi, Case No. 8:08-cv-00998-T-24-MSS (USDC MD Fla) (“the federal litigation”). That action is pending. Copies of the Amended Complaint (filed June 6, 2008) and of SESCO's Answer and Affirmative Defenses (“Answer”) have been furnished in the current UDRP proceeding.

The Complaint alleges that the names of the Respondents Samantha Ramirez and SamiRami, in whose names the Domain Name is currently registered, are fictitious. A Response was filed in this proceeding on their behalf by a Florida lawyer, Todd M. Hoepker, who also represents the Respondent Parker-Chillemi. Mr. Hoepker gives the “name” of the Respondents as “Samantha Ramirez and Samirami”, with no address except care of himself. The Response affirmatively states that the Respondents Samantha Ramirez and SamiRami “received a Notification of Complaint” from the Center, which is disingenuous, to say the least, if no such persons exist. The Response otherwise provides no information identifying these Respondents or their interest in the Domain Name. The Respondent SESCO states that it “has no knowledge of either such registrant.”

The Respondent SESCO is a Florida corporation, headquartered in Winter Park, Florida. According to its website at “”, the Respondent SESCO has acted since 1973 as a manufacturer's representative for lighting products and related services in Florida and elsewhere. In its Answer to the judicial complaint recently filed by the Complainant (discussed further below), SESCO admitted the Complainant's allegation that “WFLI and SESCO are direct competitors, and have been for many years.”

Counsel for the Respondent Parker-Chillemi (the same counsel who represents the Respondents Samantha Ramirez and SamiRami) submitted a Response in this proceeding that fails to identify the Respondent, her address, or her interest, if any, in the Domain Name. Her address is given only as care of counsel himself. A printout from SESCO's website dated May 9, 2008, furnished by the Complainant, refers to the Respondent Cynthia Parker-Chillemi as SESCO's “Director of Information Technology / Management Information Systems”. That reference no longer appears on the SESCO website, but “Cynthia Chillemi – SESCO Lighting”, with an email address in the domain , corresponded with the Center concerning the current UDRP proceeding as recently as July 28, 2008. In its Answer to the Complainant's pending judicial complaint, the Respondent SESCO admitted the Complainant's allegation that the Respondent Parker-Chillemi is an employee of SESCO.

The Internet Archive “Wayback Machine” at “” includes several archived versions of the websites associated with the Domain Name. The first, dated November 28, 1999 (before the creation date shown by the current Registrar), displays a page from the Respondent SESCO's website at “”. The Domain Name then redirected to the Complainant's website in archived versions with dates ranging from May 2001 through July 2004, consistent with the Complainant's account of the agreement reached with SESCO at some time after November 2000. Later versions of the website are not available from the Internet Archive.

The Domain Name does not currently resolve to a website.

 

5. Parties' Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to its state-registered (and common-law) WFLI mark, and that none of the Respondents have rights or legitimate interests in the Domain Name.

The Complainant argues that the Domain Name was registered and used at the behest of the Respondent SESCO to create a “likelihood of consumer confusion or to divert Internet traffic from Complainant's website to Respondents' website.” The Complainant also argues that the Respondent SESCO is a direct competitor (and former partner in business ventures) that registered the Domain Name primarily for the purpose of disrupting the Complainant's business, and that the Respondents had knowledge of the 2000 dispute over the Domain Name before “re-registering” the Domain Name.

B. Respondent

The Response of Samantha Ramirez and SamiRami refers to the pending federal litigation against the other Respondents, SESCO and Parker-Chillemi, and argues that the current UDRP proceeding should be suspended or terminated. Accordingly, the Response declines to “submit a detailed response at this time” but states unequivocally that (a) the Domain Name is not identical or confusingly similar to a mark in which the Complainant has rights, (b) the Respondents Samantha Ramirez and SamiRami have rights or legitimate interests in the Domain Name, and (c) the Domain Name was not registered or used in bad faith. These Respondents “reserve the right” to file a more detailed response if the current proceeding is not suspended or terminated.

The Respondent SESCO filed a document entitled “Motion to Terminate Administrative Proceeding”, which SESCO characterized in a later submission as “its response to the Amended Complaint”. SESCO asks the Panel to suspend or terminate the UDRP proceeding so that the issues of domain name ownership and trademark infringement or dilution can be resolved in the pending federal litigation. SESCO contends that the UDRP proceeding is duplicative and was brought “solely to harass and intimidate the Respondent”, and SESCO asks for an award of attorney's fees incurred in defending this proceeding.

SESCO's Response does not directly address the elements of the UDRP Complaint. However, it attaches SESCO's Answer and Affirmative Defenses filed in the federal litigation on July 24, 2008. These include some statements relevant to the current proceeding. In its Answer, SESCO denies that the WFLI mark is inherently distinctive, famous, or well known, or that it enjoys secondary meaning. SESCO denies knowledge of the Respondents Samantha Ramirez and SamiRami, who are listed as the registrants of the Domain Name.

The Response of Cynthia Parker-Chillemi argues that the Complaint improperly names Parker-Chillemi as a Respondent, because the Domain Name is not registered in her name, and that the Complaint should in any event be suspended or terminated because of the pending federal litigation. Nevertheless, Parker-Chillemi's Response goes on to deny that the Domain Name is identical or confusingly similar to a mark in which the Complainant has rights, admits that Parker-Chillemi has no rights or legitimate interests in the Domain Name, but denies that the Domain Name has been registered and used in bad faith. The Respondent “reserves the right” to file a more detailed response if the current proceeding is not suspended or terminated.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A Supplemental Filings

The Complainant submitted a “Further Statement” in response to the Respondent SESCO's Motion to Terminate Administrative Proceeding. The Respondent SESCO replied with a “Motion to Strike Complainant's Further Statement,” and the Complainant riposted with a document entitled, “Complainant's Response to Respondent Sesco Lighting, Inc.'s Motion to Strike Complainant's Further Statement.”

The Complainant's supplemental filings address the Respondent SESCO's argument that the Panel should suspend or terminate this administrative proceeding. The Respondent SESCO's supplemental filing urges the Panel to terminate this proceeding or, “in the alternative, allow the Respondent, Sesco, to file a full and complete substantive response to the Amended Complaint herein.”

The Policy is designed to provide an expeditious and economical administrative remedy in appropriate domain name disputes. There is no provision for discovery or hearings as there is in many judicial proceedings and in formal arbitration. Consequently, the time periods allowed for pleading and decision are short, and neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to new arguments.

Nevertheless, the Panel accepts the supplemental filings and takes them into consideration for the limited purpose of weighing the merits of the Respondent SESCO's request to suspend or terminate the UDRP proceeding because of the pending federal litigation.

B Motions to Terminate Proceeding or Permit Further Responses

Paragraph 18(a) of the Rules gives the Panel discretion to suspend or terminate the UDRP proceeding where, as here, the Domain Name is the subject of other legal proceedings:

“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

Under paragraph 18(a) of the Rules, the legal proceeding must be “in respect of a domain-name dispute”. That is partly the case here. Count II of the Complainant's Amended Complaint and Request for Injunctive Relief in the federal litigation alleges that the Respondents SESCO and Parker-Chillemi engaged in cyberpiracy in violation of federal law by registering and using the Domain Name. Paragraph 7 of the Prayer for Relief in the Amended Complaint demands that those Respondents be ordered “to turnover custody, control, ownership and title of , WesternFloridaL and WesternFloridaL to the Plaintiff”.

However, in the circumstances of this proceeding, the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation (see Policy, paragraph 4(k)).

A decision to deny the UDRP Complaint would obviously not prejudice the Respondents, nor would it bar the Complainant from continuing to seek judicial remedies. Conversely, the Respondents could suspend the effect of a UDRP transfer order by filing a judicial claim in the applicable jurisdiction within ten days (Policy, paragraph 4(k)). If they did not choose to do so, a UDRP transfer order might still have only a temporary effect, as the court in the pending federal litigation might ultimately rule against the Complainant. In the interim, the record suggests that a temporary loss of control over the Domain Name (if a transfer order were found by the Panel to be warranted under the Policy) would not be significantly prejudicial to the Respondents: the Domain Name does not currently resolve to a website, and none of the Respondents claims plans for using the Domain Name in any way. On the other hand, if the UDRP proceeding resulted in a transfer order that was not subsequently overturned by a ruling in the federal litigation, the Complainant would have more expeditious relief as intended by the Policy. The Complainant could then make its own decision about continuing with the lengthier and more costly federal litigation that it initiated, as could the Respondents in relation to whether or not they wished to initiate their own lawsuit in an applicable jurisdiction pursuant to paragraph 4(k) of the Policy, or otherwise.

Therefore, the Panel exercises its discretion to proceed to a decision in this proceeding.

The Respondents requested an opportunity to submit more detailed Responses to the Amended Complaint in this proceeding should their proposals to terminate the proceeding be denied. As noted above, the Policy is designed to provide a speedy and inexpensive resolution of certain kinds of domain name disputes. Therefore, the Rules do not contemplate the sort of “motions practice” familiar to attorneys involved in civil litigation in the United States of America, and they do not give the parties the option of exhausting preliminary issues by motion before submitting a substantive Complaint or Response.

The Respondents, who are all represented by legal counsel, chose to make minimal responses to the elements of the UDRP Complaint and focus instead on an effort to terminate the proceeding. As this Panel sees it, they gambled and lost. The Respondent SESCO furnished in addition its Answer and Affirmative Defenses in the federal litigation, which provides some clues as to its position on certain relevant facts and arguments. In the interest of expedition, the Rules and Supplemental Rules impose strict time limits and word limits for the Complaint and Response. The Respondents have not presented compelling reasons to extend those limits and permit the Respondents to prolong this proceeding by submitting further Responses.

The requests to file further Responses are denied.

C Multiple Respondents

Four parties are named as the Respondents in this proceeding. The Registrar gives two names as registrants of the Domain Name, those of the Respondents Samantha Ramirez and SamiRami. (SamiRami, originally shown as SamiRami Ind., could conceivably refer to a business or trade name, but no such name appears in the online business entities database maintained by the Florida Division of Corporations.) The postal address for both is listed as the address of the Registrar's domain registration privacy service. These persons are properly named as the Respondents in this proceeding, since the Rules, paragraph 1, define a “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.”

The Complainant alleges that Samantha Ramirez and SamiRami are merely fictitious names used by the Respondent Parker-Chillemi, acting either individually or on behalf of her employer, the Respondent SESCO. A printout from the Registrar's Whois database dated December 5, 2000 shows that the Domain Name was registered at that time in the name of the Respondent SESCO. The name of the registrant was subsequently changed to Samantha Ramirez and SamiRami. The administrative contact was listed in December 2000 as “Cynthia Parker”, probably the same person as the Respondent Cynthia Parker-Chillemi. The Respondent SESCO admitted in its Answer in the federal litigation that Parker-Chillemi was an employee, and according to an earlier version of the SESCO website, Parker-Chillemi had responsibilities for SESCO's information technology functions.

It does appear, therefore, that the Respondent SESCO and the Respondent Parker-Chillemi continue to have some undisclosed interest in the Domain Name. If they had no such interest, they could presumably have safely ignored this proceeding. Although neither is named in the Registrar's Whois as current registrant of the Domain Name, they have both filed requests to terminate the proceeding entirely, or in the alternative to be permitted to file a more detailed Response. As they have filed Responses and other submissions in this UDRP proceeding and evince an interest in the outcome of the proceeding, they will be retained as parties.

D. Identical or Confusingly Similar

The Complainant holds a Florida registered service mark for WFLI. While in some cases an unexamined trademark registration may be owed less deference than an examined registration, the Policy does not require a nationally registered mark, but rather “a trademark or service mark in which the Complainant has rights.” The Complainant's WFLI mark is identical to the Domain Name for purposes of the Policy, since the “.com” top-level domain name is an addressing convention and not distinctive.

Thus, the Panel finds that the Complainant satisfies the first element of the Policy.

E. Rights or Legitimate Interests

None of the Respondents claims a relationship with the Complainant or disputes the Complainant's assertion that it has not authorized the Respondents to use its WFLI mark. This establishes the Complainant's prima facie case on this element of the Complaint, and the burden shifts to the Respondents to produce evidence of their rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker,WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753.

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondents could demonstrate rights or legitimate interests in the Domain Name:

“(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 trademark or service mark at issue.”

From the available record, it does not appear that any of these circumstances apply. The Domain Name was used first to redirect Internet users to the website of the Complainant's competitor, the Respondent SESCO, then (following a settlement) to the Complainant's own website, then to a website of interest to lesbian, gay, bisexual, and transgendered persons; currently, the Domain Name does not resolve to a website at all. None of these uses reveal that any of the Respondents had a right or legitimate interest in using a domain name identical to the Complainant's mark.

Responses were submitted by counsel on behalf of all the four named Respondents, and none of them describe a right or legitimate interest in the Domain Name. The Respondent Parker-Chillemi states positively that she has no such right or legitimate interest.

Accordingly, the Panel finds that the second Policy element has been established.

F. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:

“(iv) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(v) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The Complainant implicitly relies on these paragraphs, arguing that its competitor, the Respondent SESCO, was behind the registration and use of the Domain Name to redirect Internet users to SESCO's website or to an entirely unrelated website devoted to sexual orientation. The Complainant infers that the Respondents meant to disrupt the Complainant's business and promote SESCO's.

The Respondent SESCO implies that there was no mark to attack when the Domain Name was first registered in May 2000, a few months before the Complainant obtained a Florida state registration of WFLI as a service mark. In its Answer in the federal litigation, the Respondent SESCO challenged the Complainant's claims that the initials WFLI are widely recognized as a mark associated with the Complainant's services.

The Complainant provides little evidence in the record of this proceeding to establish that the then-unregistered mark had acquired secondary meaning in a relevant market by May 2000, when the Domain Name was registered. In different circumstances, the limited nature of such evidence may well have proved fatal to the Complainant's case, as it would have been very difficult without more to establish a likelihood of the Respondents' knowledge of the Complainant's mark. However, it is undisputed that the Complainant displayed the initials WFLI in advertising, correspondence, and trade shows from 1980 onward, in association with its services as a lighting manufacturer's representative.

But it is not necessary in this proceeding to establish how well established or widely known the WFLI mark was in May 2000, because the Respondent SESCO and its employee Parker-Chillemi (who appears to have acted as the administrative contact for the Domain Name initially) clearly had actual knowledge of the Complainant and the initials by which it was known in the industry. The Respondent SESCO admits that it has been a direct competitor of the Complainant for many years. Both are based in Florida, and they compete as lighting manufacturer's representatives there as well as elsewhere.

SESCO's actions strongly suggest that it meant to divert customers from its competitor for its own gain and recognized that potential lighting customers were familiar with the WFLI mark in association with the Complainant's services. One day after the Domain Name was registered, two other domain names similar to the Complainant's name were registered, and . Until threatened with legal action, the Respondent SESCO used the Domain Name to redirect Internet users to SESCO's own, competing website. This conduct squarely fits the circumstances described in the Policy, paragraph 4(b)(iii) and (iv).

As evidenced by a letter from SESCO's counsel, in November 2000 the Respondent SESCO agreed to “cease all commercial activity in regard to the domain name “www.”.” According to the Complainant, SESCO agreed to transfer the Domain Name to the Complainant when the registration expired. This did not happen.

Instead, although the Domain Name was originally registered in the name of the Respondent SESCO, the registration information for all three domain names based on the Complainant's name or mark was changed to show the names of Samantha Ramirez and SamiRami as registrants. The Response filed in their behalf fails to identify these persons in any way or their interest, if any, in the Domain Name, lending credence to the Complainant's assertion that these are fictitious names. The Domain Name continued to point to the Complainant's website for at least two years after the registration renewal in 2002, suggesting that Samantha Ramirez and SamiRami, or the person behind those names, was (or were) aware of the Complainant and its mark. The Panel notes that the same attorney filed Responses on behalf of the Respondent Parker-Chillemi and the Respondents Samantha Ramirez and SamiRami, suggesting a connection among them.

The Respondents' opaque filings in this proceeding indicate a continuing effort to obfuscate the facts and avoid the issues raised by the UDRP Complaint. The Panel concludes that the probability is that the current named registrants of the Domain Name, Samantha Ramirez and SamiRami, are either fictitious names or represent a person or persons associated with the Respondent Parker-Chillemi. The Respondent Parker-Chillemi, in turn, denies any rights or legitimate interests in the Domain Name, and it appears that she has dealt with the Domain Name in the past on behalf of her employer, the Respondent SESCO. Indeed, it is difficult to see how anyone other than SESCO and persons associated with SESCO would have any interest in registering domain names based on the name and mark of SESCO's competitor and then redirecting Internet users to SESCO's website. It is telling that none of the Respondents offers a contrary explanation for registering and using the Domain Name.

The Panel concludes that the Respondent SESCO registered and used the Domain Name initially in a bad-faith effort to divert customers from the Complainant, its competitor, and that SESCO or persons associated with SESCO have used the Domain Name subsequently in bad faith, in an effort to disrupt the Complainant's business.

The Panel finds that the Complainant has established the third element of the UDRP Complaint.

The Panel's below order is of course without prejudice to any contrary determination or order that may be made by a court of competent jurisdiction.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist

Dated: October 2, 2008

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