Complainant is SiBeam Inc. of Sunnyvale, California, United States of America ("U.S."), represented by Crowell & Moring, LLP, Belgium.
Respondent is Smelser Incorporated of Fayetteville, North Carolina, U.S. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with R (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2015. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On February 16, 2015 the Center wrote to Complainant's counsel communicating that the expiry date listed in the WhoIs records for the Domain Name was that day and explaining, among other things, that in these circumstances "the Center would not typically proceed to formally notify the filed case in particular because the registrant identity and status of the domain name may be unclear". The Center further stated: "If, however, you wish the Center to accept the Complaint on a purely provisional basis, the Center will advise the Registrar that the domain name is the subject of a Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") Complaint filed with the Center and inquire whether there would be any steps required by the Complainant to arrange for the payment of any required renewal or registration fees, which may be necessary to keep the domain name registration active and subject to this UDRP proceeding." The Center requested that Complainant notify it no later than February 19, 2015 if they wanted the Center to undertake such steps. The Center also informed Complainant that if the Registrar agrees to renew the Domain Name solely to permit the proceeding to commence, and locks it for that purpose, the Center will proceed with the case.
On February 16, 2015, Complainant's counsel responded to the Center requesting that it accept the Complaint on a purely provisional basis and that it inquire from the Registrar whether there are any steps it needs to take to arrange for the payment of any required renewal or registration fees.
On February 17, 2015, the Center followed up with the Registrar requesting that it confirm in accordance with ICANN's Expired Domain Deletion Policy, paragraph 3.7.5.7: (1) that the Domain Name will be placed in Registrar lock status, and that it will remain locked after the lapse of the expiry date until the UDRP proceedings are concluded, and (2) whether any action is required by the parties in the event that the Domain Name is deleted or expires during the dispute to keep the Domain Name locked so that the administrative procedure can continue as required under the UDRP. That same day, the Registrar responded to the Center indicating on a revised WhoIs listing that the expiration date of the Domain Name is now February 16, 2016. The Registrar also confirmed the locked status of the Domain Name until the completion of this proceeding and that it was not necessary now for either party to renew the Domain Name insofar as it is in "good and active status".
The Center verified that the Complaint satisfied the formal requirements of the 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 Respondent of the Complaint, and the proceeding commenced on February 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 16, 2015.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 25, 2015. 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. 4. Factual Background
Complainant has pioneered the development of intelligent millimeter wave technologies for wireless communications. Complainant is a wholly owned subsidiary of Silicon Image, Inc., a leading provider of multimedia connectivity solutions and services for mobile, consumer electronics and PC markets. Silicon Image's semiconductor and intellectual property products feature wireless and wired technologies that deliver connectivity across a wide array of devices in the home, office and on the go.
Complainant owns the following U.S. registrations for the SIBEAM Mark (or "the Mark"), which it uses in connection with its business: U.S. Registration Number 3,633,188 registered on June 2, 2009, and U.S. Registration Number 3,659,391 registered on July 21, 2009.
Complainant initially registered the Domain Name on February 16, 2005, through one of its founders. The Wikipedia page for Complainant still mentions the Domain Name as Complainant's website. The historical WhoIs records show that the Domain Name was subsequently registered under a privacy service, and remained that way at least until February 14, 2012. Respondent's name and contact details are mentioned on the next update of the WhoIs records dated July 17, 2012. The Domain Name resolved to a blog containing articles related to the world of technology. The latest entry on this blog dates from August 7, 2013. Now the Domain Name does not resolve to any website. 5. Parties' Contentions A. Complainant
The SIBEAM Mark is well known and Complainant actively promotes it through a website linked to the domain name . Complainant has continuously used the Mark since 2005 in its external communication and branding, e.g., on its company website accessible through "www.", on the products it sells, on billboards, advertisements. The Domain Name incorporates Complainant's Mark in its entirety thus establishing that the Domain Name is identical or confusingly similar to the Mark.
The WhoIs records indicate that Respondent is Smelser Incorporated, showing that Respondent is not commonly known by the Domain Name. Furthermore, Respondent has not acquired trademark or service mark rights and Complainant has not authorized Respondent's use and registration of the Domain Name. In the absence of any license or permission from Complainant to use the Mark, Respondent has no actual or contemplated bona fide or legitimate use of the Domain Name. Finally, the Domain Name resolves to a blog containing articles in the activity field of Complainant, but the blog does not seem to have been updated since August 7, 2013. Respondent has no legitimate reason for using Complainant's Mark in this respect. Moreover, the rather passive use does not constitute a legitimate or fair use according to the Policy.
When Respondent registered the Domain Name, it must have known about Complainant and the Mark because of: (1) Complainant's reputation in the technology field (e.g., from its Internet presence); (2) the Domain Name is identical to Complainant's Mark (i.e., "sibeam" is very distinctive and does not refer to any generic word, which excludes any possibility of coincidence); (3) a trademark search at the time of the transfer of the Domain Name would have revealed Complainant's trademark registrations and an Internet search would have revealed Complainant's presence and trademarks; and (4) the Domain Name resolves to a blog containing articles in Complainant's field, some of which include links to third party websites. One of these articles, "The Latest And Greatest Of Cutting Edge Technology", dated September 12, 2012, directly refers to Complainant's main business, namely wireless communications. As there is bad faith under the Policy when a respondent knew or should have known of a complainant's trademark rights, and nevertheless registered a domain name incorporating the mark, in circumstances where the respondent itself had no rights or legitimate interests in said trademark, it is clear that Respondent registered the Domain Name in bad faith.
By registering the Domain Name Respondent is preventing Complainant from reflecting its marks in the corresponding Domain Name thus affecting Complainant's business by attracting visitors looking for information about Complainant and creating difficulties for persons searching the Internet. It also tarnishes Complainant's Mark and is a significant indicator of bad faith. The use of Complainant's Mark and the references to Complainant's main business on Respondent's blog create a strong likelihood of confusion with Complainant's Mark and activities as to the source, sponsorship, affiliation, or endorsement of the blog in order to attract visitors. Moreover, Respondent's use of the Domain Name tarnishes Complainant's Mark because the blog linked to the Domain Name only contains very general information and it has been inactive since August 7, 2013. The passive holding of a domain name amounts to bad faith when it is difficult to imagine any plausible future active use of the domain name by the respondent that would be legitimate and not infringing the complainant's well-known mark or unfair competition and consumer protection legislation. Here, in view of the distinctive and well-known character of Complainant's Mark in the technology field, it is impossible to imagine any plausible legitimate use of the Domain Name by Respondent. Moreover, it cannot be excluded that Respondent uses the Domain Name for fraudulent activity, e.g., by profiting off of the likelihood of confusion with Complainant's Mark for phishing activities. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is uncontested that Complainant established rights in its SIBEAM Mark long before Respondent registered the Domain Name in 2012. These rights were established by Complainant's long-term use and by virtue of the various trademark registrations mentioned earlier.
The Domain Name consists of Complainant's SIBEAM Mark in its entirety and the gTLD suffix ".equipment". It is an accepted principle that the addition of suffixes such as ".com", being a gTLD, is not a distinguishing factor. Consequently, the Panel finds that the Domain Name is identical to Complainant's Mark.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is undisputed that: (1) Respondent is not commonly known by the Domain Name, rather, the WhoIs records indicate that Respondent is Smelser Incorporated; (2) Respondent has not acquired trademark or service mark rights in the Mark; (3) Complainant has not authorized Respondent to use or register the Domain Name; and (4) the Domain Name resolved to a blog containing articles in the activity field of Complainant, which does not seem to have been updated since August 7, 2013.
Complainant has raised a prime facie presumption of Respondent's lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the Domain Name by Respondent in bad faith:
"(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered the Domain Name in bad faith. Complainant's rights in the SIBEAM Mark are uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainant established its rights in the Mark. Furthermore, Respondent registered a Domain Name that is identical to Complainant's SIBEAM Mark, having no rights or legitimate interests in the Domain Name.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. Nevertheless, it is paramount that UDRP panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name "has been registered and is being used in bad faith". Based on the evidence of record, the Panel's conclusion that Respondent has used the Domain Name in bad faith is a close call.
Complainant asserts that by registering the Domain Name, Respondent is preventing it from reflecting the Mark in a corresponding domain name. To prove satisfaction of paragraph 4(b)(ii) of the Policy, Complainant had to show not only that Respondent registered the Domain Name to prevent the owner of the trademark or service mark from reflecting the Mark in a corresponding domain name, but also that Respondent engaged in a pattern of such conduct. Here, Complainant adduced no evidence that Respondent has engaged in an abusive pattern of registering domain names to prevent Complainant or other trademark owners from reflecting their marks in corresponding domain names.
Complainant also asserts that using the Mark along with references to Complainant's main business on Respondent's blog creates a strong likelihood of confusion with the Mark and activities as to the source, sponsorship, affiliation, or endorsement of the blog in order to attract visitors. It appears that Complainant is attempting to bring Respondent's activities within the ambit of paragraph 4(b)(iv) of the Policy. To do so, Complainant had to show that "by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location". There is no evidence currently in this record that would permit the Panel to conclude or infer that Respondent is using or has used the Domain Name for commercial gain. Furthermore, the "references to Complainant's main business" on Respondent's blog are tenuous at best.
Complainant also alleges that Respondent's use of the Domain Name tarnishes Complainant's Mark because Respondent's blog only contains very general information and has been inactive since August 7, 2013. Paragraph 4(b) of the Policy does not mention the possibility of "tarnishment" as a basis for bad faith use however, notwithstanding that, Complainant has not persuaded the Panel on the facts here that Respondent's out of date blog would tarnish Complainant's reputation or otherwise constitute bad faith use.
Lastly, Complainant argues that under the circumstances here, Respondent's blog constitutes a passive holding of the Domain Name, which constitutes bad faith registration and use. Complainant had registered the Domain Name in 2005, but somehow forfeited that registration. The WhoIs records show that the Domain Name was next registered under a privacy service, and remained that way at least until February 14, 2012. Respondent surfaced in July 2012 as the registrant of the Domain Name. Thus, Respondent took active steps for some period of time to conceal its identity. Furthermore, although Respondent appeared to use the Domain Name for some period as a blog, it stopped updating the blog back in 2013. The fact that Respondent permitted its blog to become inactive along with the fact that Respondent has suddenly permitted the Domain Name to become inactive (i.e., it no longer resolves to a web site) points in the direction of a passive use of Complainant's well-known Mark. These circumstances combined with the facts that Respondent chose a well-known Mark for its Domain Name, Respondent has no rights or legitimate interests in the Domain Name, and Respondent made no attempt to defend its use of the Domain Name leads the Panel to conclude that Respondent is using the Domain Name in bad faith.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For 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 Complainant.
Harrie R. Samaras
Sole Panelist
Date: April 4, 2015
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