The Complainant is Snore Fix Inc. of Arcadia, California, United States of America (“United States”), represented by TechLaw LLP, United States.
The Respondent is Domain Administrator, Top Business Names of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2016. On February 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2016, 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.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 19, 2016. On March 19, 2016, the Complainant submitted an unsolicited supplemental filing. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2016. The Respondent did not submit any response. Accordingly, the Center provided notice of the Respondent’s default on March 11, 2016.
The Center appointed Luca Barbero, Neil A. Smith and Nick J. Gardner as panelists in this matter on March 30, 2016. The Panel finds that it was properly constituted. Each member of 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
The Complainant is the owner of the United States Trademark Registration No. 4642615, registered on November 18, 2014, for SNORE FIX (word mark) for medicated throat sprays in International class 5. According to the trademark registration certificate, the Complainant claimed first use of the mark on September 1, 2012.
The disputed domain name was registered on January 20, 2006, and is pointed to websites changing at each access, displaying information about solutions to stop snoring and various sponsored advertisements. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its trademark SNORE FIX.
The Complainant claims that the Respondent does not have any rights or legitimate interests in the disputed domain name since the Respondent does not offer any products for sale on the website at the disputed domain name. The Complainant states that the disputed domain name redirects to a website under the domain name which also sells an anti-snore product.
The Complainant informs the Panel that a search on the USPTO’s trademark database reveals that the Respondent does not have a registration for SNORE FIX or any similar names and that the Respondent does not have any trademarks registered in its name.
According to the Complainant’s searches on Google, the Respondent owns over 3,633 domain names, most of which are characterized as pointed to “undeveloped” websites.
The Complainant also asserts that the Respondent does not appear to be known as anything other than “Top Business Names” and that the Respondent is not using the disputed domain name for a legitimate
noncommercial or fair use given that it is intentionally using the disputed domain name to redirect to another website, misleading consumers and tarnishing the Complainant’s trademark SNORE FIX.
The Complainant further states that the Respondent is using the disputed domain name in bad faith, since the Respondent is using it to redirect to another third-party website that also sells anti-snoring products, misleading consumers and causing a likelihood of confusion amongst the public as to the source and affiliation of the Complainant’s products. The Complainant contends that said actions benefit the Respondent to the detriment of not only the Complainant, but also the public.
The Complainant also argues that the Respondent appears to have engaged in a pattern of such conduct, given that legitimate owners of trademarks have filed UDRP actions against the Respondent, and in each case, the Complainant was successful. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Preliminary procedural issue: Complainant’s Supplemental Filing
As mentioned in the Procedural History, after the notification of the Complaint, the Complainant submitted an unsolicited supplemental filing requesting that an additional document be admitted in the proceeding, namely the trademark assignment declaration showing that the registered trademark on which the Complainant relies was assigned from the Complainant’s president, Mr. Weismann, to the Complainant.
According to the consensus view of UDRP panels as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, it is in the panel’s discretion whether to accept supplemental filings, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting the supplemental filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. In addition, most UDRP panels that have allowed unsolicited supplemental filings have also tended to require some showing of “exceptional” circumstances.
Although the document in question could have been provided by the Complainant when it filed the Complaint, the Panel, in exercising its discretion according to paragraph 10 and 12 of the Rules, has decided to admit it in this proceeding. Its earlier omission appears to have been a mistake, and its inclusion does not alter the Panel’s decision (see below). The Panel does not find it necessary to provide the Respondent with a term to comment on it, since said document was forwarded by the Center to the Respondent the same day of notification of the Complaint and the Respondent was thus provided 20 calendar days to comment on it but, as mentioned above, failed to submit any response. B. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a United States trademark registration for SNORE FIX. Said trademark was originally registered in the name of the Complainant’s president and subsequently assigned to the Complainant, as highlighted in the assignment declaration submitted by the Complainant and confirmed by the Panel’s review of the trademark information as displayed on the USPTO online database.1
Therefore, the Panel finds that the Complainant has established rights in the trademark SNORE FIX for the purpose of this proceeding.
The Panel also finds that the disputed domain name is identical to the Complainant’s trademark, as it encompasses it in its entirety, with the mere deletion of the space between the two terms “snore” and “fix” and the addition of the generic Top-Level Domain “.com”, which can be disregarded as being a mere technical requirement of registration.
In view of the above, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
With respect to this requirement, the Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen,WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel notes that there appears to be no relation between the Respondent and the Complainant and that the Respondent has not obtained any authorization to use the Complainant’s trademark or the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
Furthermore, there is no evidence on record that the Respondent might have used, or made preparation to use, the disputed domain name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute. The Complainant stated that the disputed domain name was redirected to another website promoting the sale of a competitive anti-snoring products, albeit no evidence of said use was attached to the Complaint (an omission that is hard to understand). However, the Panel’s review of the Respondent’s website show that the disputed domain name has been pointed to websites displaying commercial advertisements redirecting users to other “snore-related” websites. It is thus clear to the Panel that the purpose of the Respondent is not to use the disputed domain name to genuinely promote products or services or make a noncommercial or fair use, but to generate traffic to online websites and, possibly, to gain commissions through the publication of sponsored advertisements.
In the absence of a response, the Panel would be inclined to find that the Complainant has proven the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Complainant is required to prove, under paragraph 4(a)(iii) of the Policy, the Respondent’s bad faith both at the time of registration and in the use of the disputed domain name.
As highlighted in the paragraphs above, the Complainant relies upon a registered trademark which, according to the related trademark certificate, was first used in 2012 and first used in commerce in 2014. The disputed domain name was registered in 2006, and there is no allegation or evidence that the Respondent may have acquired it at some later date.
The Panel notes that the Complainant has not provided any details about the history of the Complainant and its business, which the Complainant would be expected to know, and did not comment on the bad faith registration issue. Specifically, the Complainant failed to submit any document or statement to demonstrate that the Respondent, at the time of registration, was or could have been aware of the Complainant and the trademark SNORE FIX, which, according to the documents submitted by the Complainant, has been used only as of 2012, i.e., six years after the registration of the disputed domain name. As a general rule bad faith registration cannot arise in circumstances where the registration predates any applicable trademark rights that the Complainant asserts – see WIPO Overview 2.0, at paragraph 3.1: “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right”. That is exactly the position in the present case.
In view of the above, the Complainant’s further assertions as to the Respondent’s use of the disputed domain name, the other UDRP cases in which the Respondent was involved – one of which was in fact decided in favor of the Respondent there, contrary to the indications of the Complainant – and the Respondent’s alleged ownership of a relevant number of domain names, are not sufficient by themselves to establish the Respondent’s bad faith under paragraph 4(a)(iii) of the Policy.
However that may be, in view of the above, the Panel finds that the Complainant failed to prove that the Respondent registered the disputed domain name in bad faith having the Complainant’s trademark in mind and with the intention to target the Complainant’s trademark. 7. Decision
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Presiding Panelist
Neil A. Smith
Panelist
Nick J. Gardner
Panelist
Date: April 14, 2016
1 “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include […] referencing of trademark online databases.” WIPO Overview 2.0, paragraph 4.5.
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