The Complainant is Spy Optic, Inc. of Carlsbad, California, United States of America, represented by the law firm Stetina Brunda Garred & Brucker, United States of America.
The Respondent is James Lee of Miami, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2013. On August 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 23, 2013, the Complainant submitted an amendment correcting a clerical error in the original Complaint. On August 28, 2013, the Complainant filed a further amendment to the Complaint.
The Center verified that the amended Complaint (referred to in this Decision as the “Complaint”) satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2013.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 26, 2013. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant sells eyewear including athletic goggles and sunglasses under the name “Spyoptic”. The Complainant holds trademarks for SPY and SPYOPTIC, for sunglasses and sport goggles and related apparel and sport bags, both duly registered with the United States Patent and Trademark Office (“USPTO”). The Complainant’s principal Internet address is , which it registered in 2001.
According to the Complaint and as verified by the Panel the Respondent registered the disputed domain name on May 27, 2013. When the Panel entered the disputed domain name into his browser he received the following response: “This is the Kloxo Default Page
If you are seeing this page, it means that web has not been configured for this domain on this server.
This could be due to the following causes:
- Kloxo has not restarted the web server yet after you added the domain. Please wait for the web server to restart.
- The domain is pointing to the wrong Kloxo server. Ping the domain and make sure that the IP matches one of the IPaddress seen in admin home -> ipaddresses
- If you are seeing this page when you try to access an IP like , then that means that the IP has not yet been mapped to a domain. Go to client home> ipaddresses> ipaddress home -> domain config and map an IP to a domain.
- Once you map an IP to a domain, then you have to make sure that the domain pings back to the same IP. Otherwise, if you try to access the domain, you will get this page. So IP -> should mean that pings to the same IP.” 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The Complainant has rights in SPYOPTIC by reason of its USPTO-registered trademarks for SPY and SPYOPTIC. Adding a common word (here, “outlet”), using the plural rather than the singular, and adding a generic top-level domain (here, “.com”) do not obviate confusing similarity with those marks.
2. The Complainant first asserts that the “Respondent is not using the website [at the disputed domain name];” rather “an unidentified third party” uses it to sell sunglasses including “what appear to be counterfeit products.” Complaint, paragraph V.B.3, first bullet point. The Complainant has not authorized the Respondent to use its marks and the Respondent has never been commonly known by the terms SPY or SPYOPTIC. The Complainant’s rights are “senior” to any rights the Respondent “may arguably have” in the disputed domain name because its trademark and website registrations predated the Respondent’s registration of the disputed domain name.
3. By choosing a domain name that is similar to the Complainant’s registered trademarks the Respondent intended to disrupt the Complainant’s business and confuse Internet users seeking the Complainant. The Complainant’s trademark registrations and its registration of its own domain name predate by years the Respondent’s registration of the disputed domain name, evidencing bad faith as an intent to profit from its similarity to the Complainant’s marks. Only the Complainant has rights to use its marks for the sale of sunglasses. “The use of a domain name that includes terms identical to a mark in which the Complainant has rights, is clear evidence of bad faith use of the disputed domain name.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Standard of proof in a default case
Unlike civil litigation, the Respondent’s default does not result in an automatic decision in the Complainant’s favor or an admission of the truth of the factual allegations in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. Even in a default case “[t]he Policy requires the Complainant to prove each of the three elements. Policy, paragraph 4.” Western Research 3000, Inc. v. NEP Products, Inc.WIPO Case No. D2004-0755, emphasis in original. B. Registered and used in bad faith
To meet its burden of proof under paragraph 4(a)(iii) of the Policy the Complainant must demonstrate by a preponderance of the evidence that the Respondent both registered and used the disputed domain name in bad faith. WIPO Overview 2.0, paragraph 3.1. Ordinarily this requires proof that the Respondent actually knew of the Complainant and its trademarks and that the Respondent selected and used the disputed domain name improperly to take advantage of whatever renown attaches to the Complainant’s mark. (The Panel refers to the second of these elements as “targeting.”) Id., paragraph 3.4.
Had the Complainant demonstrated with competent evidence that the Respondent used the disputed domain name in the manner alleged in the Complaint, for sale of counterfeit or competing goods, the Panel might easily have found the necessary targeting and, by implication, the Respondent’s actual knowledge of the Complainant’s marks. The Complainant however has furnished no evidence to support these charges. The Panel’s own accessing the disputed domain name indicates that no use at all is being made of the disputed domain name, not even hyperlinks to the Complainant’s products or products competing with the Complainant’s products, or anything else that might allow an inference that the Respondent had the Complainant or its products in mind when he registered the disputed domain name.
The Complainant relies solely upon its “superior rights” in the word or phrase “spyoptic”. While under United States trademark law prior ownership of a registered mark creates a presumption of knowledge, it is now established Policy precedent that this presumption, often called constructive notice, does not apply in Policy proceedings. WIPO Overview 2.0, paragraph 3.4. Beyond asking the Panel to apply “the trademark laws of the United States” to this proceeding the Complainant makes no allegation and offers no proof or argument why any of the limited exceptions to this well-settled Policy precedent should obtain in this case. As this Panel has stated, in a case involving a trademark far more well known than the Complainant’s marks at issue here, “That [departing from the general rule that constructive notice does not apply in Policy proceedings] is not possible in this case as Complainant has submitted no evidence at all of the word’s exclusive or prominent association with Complainant or its products.” Kellwood Company v. Onesies Corporation,WIPO Case No. D2008-1172.
The Policy’s requirements are conjunctive; each must be proven if a panel is to order transfer. Since the Complainant has failed to prove registration or use in bad faith, the Panel need not address the requirements of paragraphs 4(a)(i) or 4(a)(ii) of the Policy. C. Reverse domain name hijacking
The Rules, paragraph 1, define reverse domain name hijacking (RDNH) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Whether this occurs is a matter for the Panel to consider even if the Respondent does not request a finding of RDNH, see Goway Travel Limited v. Tourism Australia,WIPO Case No. D2006-0344.
If the face of the complaint itself demonstrates a settled reason why the complaint must be denied, a panel may make a finding of RDNH. See, for example, Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011; Liquid Nutrition Inc. v. /Vertical Axis Inc.,WIPO Case No. D2007-1598. Further, the Complainant’s or its representative’s conduct in this proceeding includes several other items any of which independently would justify finding that the Complainant has abused the UDRP process.
As in Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByP / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center,WIPO Case No. D2012-1555, the Complaint either ignores or glosses over several matters on which well-established Policy precedent weighs directly against the Complainant’s contentions. Though the Complainant duly recites the requirement of paragraph 3(b)(xiv) of the Rules that “Complainant certifies that . . . the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument,” nothing is said as to why the Panel should not decide this proceeding on the basis of settled precedent.
The Complaint contains assertions that might easily have been included to mislead the Panel, a separate circumstance justifying RDNH. WIPO Overview 2.0, paragraph 4.17, third paragraph; Coöperatie Univé U.A. v. Ashantiplc Ltd / c/o Domain Name Privacy LLC,WIPO Case No. D2011-0636. The most egregious of these is the allegation in paragraph V.B.3 of the Complaint that “The disputed domain name [sic] is used in marketing and selling various sunglasses through its website under Complainant’s registered trademarks. Thus the disputed domain name is used for commercial purposes.” (Emphasis added.) Nothing in the Complaint or the WhoIs database or anything else this Panel can find ties this second web address or the content at that website to the Respondent, yet the quoted language in that clause includes the most serious charge in the Complaint. And in the very next sentence of the Complaint the Complainant goes on to assert that “The disputed domain name is used to induce Internet users to purchase products that falsely appear to be Complainant’s goods, but actually compete directly with the Complainant’s goods.”
The fact that this Complainant filed a separate UDRP complaint against a different respondent involving this second domain name1 may explain, though not excuse, the reference to the unrelated (so far as the evidence shows) domain name in this proceeding. Perhaps the quoted clause was cut and pasted from the other complaint. Such a practice makes things worse for the Complainant or its representative and cannot be squared with the certification required by paragraph 3(b)(xiv) of the Rules. And the fact that the Complainant is represented by counsel makes matters worse still. After a dozen years’ Policy cases a professional who signs a pleading in a Policy proceeding should be familiar with Policy practice. For the same reasons as a judge would rebuke the Complainant for such conduct, whether careless or intentional,2 in civil litigation, this Panel shall rebuke it in this proceeding.
The Panel finds that the Complaint was brought in bad faith to attempt to deprive a registered domain-name holder of a domain name and constitutes an abuse of this administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Date: October 1, 2013
1 Spy Optic, Inc. v. Thomas Jones,WIPO Case No. D2013-0981.
2 As the Complainant’s counsel did review the Complaint post-filing (see section 3 above) for “clerical errors” it would appear that inclusion of the offending reference to the other domain name was not inadvertent.
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