The Complainant is SOTI Inc. of Ontario, Canada, represented by Sidney Rua, Canada.
The Respondent is John L. Henry, Strategic Outsource Technologies, Inc. of Roselle, New Jersey, United States of America, represented by RT Lawfirm USA, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2017, 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 March 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2017. The Response was filed with the Center on April 7, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 27, 2017. 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.
After the notification of the Complaint and the submission of the Response, on April 25, 2017, the Center received a Supplemental Filing from the Complainant asking about the possibility to refute Respondent’s allegations. On April 26, 2017 the Center received correspondence from the Complainant stating “There is also a very crucial piece of information that is missing from the claim that should be included regarding the offer of sale of the domain by the respondent to SOTI.” On April 27, 2017, the Center received a third Supplemental Filing from the Complainant which again included the request for the appointment of a three-member panel subject to the Respondent’s consent. On April 28, 2017, the Center received a Supplemental Filing from the Respondent stating his opposition to the submission of the Complainant’s Supplemental Filings.
The Center noted that it would forward the Parties’ Supplemental Filings to the Panel who had the discretion to determine whether to consider and/or admit any Supplemental Filing in rendering its decision, and whether to order further procedural steps as the panel might deem fair, expedient, or otherwise appropriate, having regard to its powers under paragraph 10 of the Rules.
The Panel by its Procedural Order No. 1 allowed the Complainant to file a further supplemental filing in relation to the information it wished to rely on, and also allowed the Respondent to submit a rebuttal. The Panel indicated it would determine the admissibility or otherwise of material contained in the supplemental filings once it had reviewed the same.
The Panel in Procedural Order No. 1 rejected Complainant’s request for the three-member Panel, indicating that it did so for the same reasons as are discussed in the Panel decision in Facebook, Inc. v. Amjad Abbas,WIPO Case No. DME2010-0005.
The Complainant filed a Supplemental Statement on May 14, 2017. The Respondent did not file any further statement. 4. Factual Background
The Respondent first registered the Disputed Domain Name on January 19, 1998. The Disputed Domain Name resolves to a website advertising Respondent’s business and the provision of services such as “web development” and “Internet services”. In addition, in accordance with the evidence provided by the Respondent, it seems that the Disputed Domain Name has been used in connection with an email address.
The Complainant is a Canadian company. It owns a number of registered trademarks for the term “SOTI”. So far as can be determined from the Complaint the earliest of these is Canadian registered mark TMA788809 registered on January 26, 2011. These trademarks are referred to in this decision as the “SOTI trademarks”.
Details as to the Respondent appear below. 5. Parties’ Contentions A. Complainant
The Complaint is short of detail. It recites brief details of the Complainant’s SOTI trademarks in various jurisdictions and says certificates can be provided “upon request”. It says that the both the Complainant and the Respondent are providers of what it describes as “wares and services for mobile devices”. It says “The mobile device and enterprise management software (this presumably refers to something the Complainant provides though no details have been given to the Panel) and associated services and the ‘SOTI’ trademark have been used extensively since 1995”. No evidence is provided to support this assertion. Beyond this the Complaint provides almost no other factual information.
The Complainant says that the Disputed Domain Name is identical to the SOTI trademarks.
It then says that the Respondent has no rights or legitimate interests in the term “SOTI”. It says the Respondent has not been commonly known by the Disputed Domain Name, nor has the Respondent used the Disputed Domain Name as a consistent business name, nor otherwise in connection with a bona fide offering of goods or services. It says the Respondent has neither registered nor applied to register any trademarks consisting of the word “SOTI” either in the USA, Canada, or otherwise. It also says the Respondent should not be considered to have rights or legitimate interests in the Disputed Domain Name because the use of the Disputed Domain Name infringes the Complainant's rights in the “SOTI” trademark. It also says the Respondent has offered to sell the Disputed Domain Name which supports a finding that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Complainant says that the Respondent’s registration and use is in bad faith. It says he did so solely to trade on the goodwill, and reputation associated with the Complainant’s SOTI trademark and to prevent the Complainant from registering a corresponding domain name. The Complainant says the Respondent, who has no rights or legitimate interests in the Disputed Domain Name, knew that the Disputed Domain Name would be of value to the Complainant. The conclusion according to the Complainant is that the Respondent registered the Disputed Domain Name in order to prevent the Complainant from registering and using the SOTI mark in a corresponding “.com” domain name. The Complainant says the Respondent had also registered corresponding domain names similar to the Disputed Domain Name but which the Respondent has now allowed registration to lapse given the communication between the Complainant and the Respondent and the close similarity to other marks owned by the Complainant. It also says that “the design and layout to the [Respondent’s] website has purposely been done in a manner to create confusion and to dilute and harm the brand and good will of the Complainant”.
The only correspondence produced in evidence with the Complaint is some email correspondence from the Respondent to a third party in which the Respondent points out that it is unconnected with the Complainant and informs that party that the Complainant’s domain name is . It is not clear to the Panel how or why this correspondence is said to advance the Complainant’s case.
It should also be noted that the Complaint clearly shows that the Complainant is aware of the Respondent’s involvement with his company (see below). It expressly states: “The Respondent is the First Board of Directors for Strategic Outsource Technologies, Inc., and the First Board of Directors and Incorporator for Strategic Outsource Technologies Professional Corporation. The Respondent, through prior communications with SOTI Incorporated has identified the above corporation as “SOTI”. For the disputed domain names in this Complaint, the registrant organization has been identified as Strategic Outsource Technologies, Inc. As the Respondent is identified as the registrant name and administrative contact for the disputed domain name and is the main point of contact for Strategic Outsource Technologies, Inc., the corporation as identified has been named in in this Complaint”.
The Complainant by its Supplemental Statement (the admissibility of which is discussed below) makes various further points. It exhibits correspondence that took place in 2012 and 2013.
In this correspondence the Complainant in effect asserts what it says are its trademark rights and asks the Respondent’s attorney to indicate a reasonable price the Respondent would accept for the Disputed Domain Name. The Respondent’s attorney replied sating “I have had an opportunity to confer with my client on this matter, and I have been authorized to offer the sale of their interest in the registered domain name, SOTI.com, for the sum of $150,000.00. My client, Strategic Outsource Technologies, Inc, is a New Jersey For Profit Corporation, established in November, 1994. John L. Henry is the President of the corporation. The corporation has traded under the acronym, SOTI, since on or about 1995. The domain name of ‘SOTI.com’ was registered January, 1998 and put into commercial use immediately thereafter”
The Complaint responds to this communication as follows “Taking into consideration the appraisals performed on the domain, reviewing the past domain content and usage using internet archives, and taking into consideration past communications between your client and the President of SOTI Inc, the offer of $150,000.00 USD is unreasonable, especially since the domain had been inactive and was redirecting to since on or about May of 2009. It was only recently that had been reinstated and put back online, which at its current state raises concerns with the company. On the current site, not all links are active, there is no real service or product being offered, and there is no contact or company information readily available”
In subsequent correspondence the Respondent stated “You are one of several parties interested in purchasing the domain name of . At present the minimum selling price is $150,000.”
The Complaint then restated its position by again asserting its trademark rights and says “The offer made by John Henry of $150,000.00 USD is extremely unreasonable as there is no clear indication of any service or product being offered on the www. site that would justify any form of income being generated to warrant that asking amount”. Matters did not then proceed further.
The Complainant also exhibits a document which describes itself as a “domain appraisal powered by godaddy” which states that the estimated value of is USD 1,240 – USD 1,678. It is not clear to the Panel how this appraisal was generated or what if any factual data apart for the Disputed Domain Name it took into account.
The Complainant’s Supplemental Statement goes on to explain its case further as follows:
“The triggering factor which led SOTI to reach out to the Respondent, with interest of purchasing the domain, was a result of the then inactive domain being reinstated and designed by the Respondent in such a fashion similar to the then “www.” website. Refer to The Wayback Machine Internet Archive to view archive on both “www.” and “www.”. The newly active “www.” website, which previous to the attached communication redirected to a photography related website, raised concerns within the SOTI organization of passing off and the creation of confusion in the marketplace and hence the willingness on SOTI’s part to negotiate in good faith with the Respondent. SOTI’s concerns were further elevated when it came to SOTI’s attention that the Respondent had registered several other domains, in particular and , that were in line with and threatened SOTI’s branding and product line. This had prompted SOTI to respond on August 20, 2013. It was upon the registration of the additional domains, along with the Respondent’s current use of the domain, that SOTI concluded that the Respondent’s set offer of sale for the domain and the unwillingness and lack of financial justification for the offer was an attempt by the Respondent to financially benefit on the successful global branding of SOTI as a mobile device management solution. Even though the position of the Respondent is that the initial registration of the domain was not done in bad faith, the Respondent’s more recent actions and subsequent use of the domain provides SOTI cause to believe otherwise and [are] the basis for submitting the Claim”. B. Respondent
The Respondent says that “The Respondent commenced use of the trademark ‘SOTI’ in connection with various services in January 1998. From said date to the present the Respondent has protection under the common law trademark precedents prevailing at the time of Respondent’s use of same. This common law protection covered Respondent for all classes of commercially employed services and products sold by the Respondent under said trademark. Moreover, the complainant [sells] services and products that are different from those sold by the Respondent”.
The Respondent says he formed the corporation “Strategic Outsources Technologies Inc.”, under the laws of the State of New Jersey, USA in January 1998. Since the formation of said corporation the Respondent says he has used the abbreviation of said corporate name, SOTI, and traded under that name continuously to the present. The corporation’s business includes provision of email hosting services; acting as Domain Register Agent for TUCOWS, Inc., SRSPlus and W; providing digital photographic and media production business; information technologies consulting for private and public entity clients; and designing mobile websites.
The Respondent says that at the time of his formation of the corporation and commencement of the use of the mark SOTI as an unregistered trade name, the Respondent had no knowledge of the existence of the Complainant or the use of the mark SOTI by Complainant or any other commercial vender of electronics, computers or other related services and/or product sales.
The Respondent says he first became aware of the Complainant’s use of the domain name over five years ago when the Complainant contacted the Respondent offering to purchase the Disputed Domain Name from the Respondent. He says similar communications and offers were made on many other occasions thereafter but that he has always declined the Complainant’s offers.
The Respondent denies he has acted in bad faith in his use of the Disputed Domain Name and says the Complainant has not and cannot produce any evidence of bad faith on the Respondent’s part. He says that the Complainant has filed the Complaint against the Respondent as a frivolous act merely seeking to harass the Respondent and/or to pressure the Respondent to relinquish his rights under duress. 6. Discussion and Findings Preliminary issue – the Supplemental Statement
The Panel has reviewed the Supplemental Statement which the Complainant has filed pursuant to the Panel’s Procedural Order No. 1. Normally, absent exceptional circumstances, the Panel would not be inclined to allow material which could have been included with Complaint to be introduced by way of a supplemental filing. In the present case however the Panel takes the view that the Respondent has in substance requested a finding of Reverse Domain Name Hijacking (“RDNH”). Exceptionally the Panel will admit the Supplemental Statement (save in one respect – see below). It does so because before considering the issue of RDNH the Panel wishes to allow the Complainant the opportunity to correct any deficiencies in its original complaint so that the Panel has the benefit of understanding fully the case the Complaint wishes to make.
The Panel is not however prepared to accede to the Complainant’s request that the Panel conducts its own research on “” to compare historical copies of the Complainant’s and Respondent’s respective websites. A party who wishes to rely upon an argument of that nature should itself introduce properly in evidence copies of the material it relies upon and not invite the Panel to go and find such material. The suggested approach would produce an undue burden on the Panel, is potentially open ended in scope and is fundamentally unfair to the Respondent who will not be able to understand properly the case that is being advanced against it. Accordingly, the Panel declines to admit that part of the Complainant’s Supplemental Statement that is related to “”. Substantive Issues
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it owns the SOTI trademarks. The Panel holds that the Disputed Domain Name is identical to the SOTI trademarks. It is well established that the generic Top-Level Domain (in this case “.com”) does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
It does not matter for the purposes of this element that the Disputed Domain Name was registered before the SOTI trademarks existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.4:
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP” (see below as to bad faith issues).
Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a 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.
In the present case the Disputed Domain Name was registered by the Respondent in 1998. This was long before the Complainant registered any SOTI trademark. The Complainant asserts it has carried out its business since 1995 and goes on to assert that the Respondent must have known of it, and its SOTI trademark when he registered the Disputed Domain Name. The Complainant has not produced any evidence to support this assertion. All the Complainant does is provide details of the Complainant’s registered trademarks (all of which are much later in time) and then in effect simply recite various elements from the Policy, without providing any factual evidence to show why those elements apply to the present circumstances. In these circumstances, for the reasons discussed further below, the Panel does not consider that the Complainant has established the Respondent must have known of the Complaint or its SOTI trademark when he registered the Disputed Domain Name. This is particularly so given the Complainant is based in Canada whilst the Respondent is based in the USA and the Complainant has not provided any information at all as to whether it had any business activities in the USA that predated Respondent’s registration of the Disputed Domain Name.
The Panel is unclear on exactly what case (if any) the Complainant is advancing as to the bona fide of the Respondent. The Complaint clearly identifies “Strategic Outsource Technologies Inc.” and acknowledges that “the core business activities of both the Respondent and Complainant are transacted online, and that both parties engage in a similar offering of services and wares, in particular wares and services for mobile devices”. All of this would seem to amount to an acceptance of the Respondent’s case that he operates a bona fide business called “Strategic Outsource Technologies Inc”. However it would appear from the correspondence lodged with the Complainant’s Supplemental Statement that the Complainant takes exception to the Respondent’s website as being incomplete and lacking information and would appear to suggest it has been created as an artificial justification in order to legitimize the Disputed Domain Name. The Panel has viewed the Respondent’s website in its current form and agrees that it is rather odd, especially for a business involved in the provision of technology. Many (probably a majority) of the links (both internal and external) on the site do not work and nowhere that the Panel could find were any postal or email addresses or other identifying information found beyond the name of the company. A telephone number can be found by locating on a specific page a sample mobile website for “SOTI mobile”. However such limited content as is present on the website seems consistent enough with a bona fide business providing some sort of services relating to the design of websites suitable for viewing on mobile devices. This would seem to be consistent with what the Respondent says about his business and indeed with how the Complaint has described the Respondent’s business. It may be that the website in question is rather amateurish and unfinished, but that alone does not amount to sufficient evidence to derive any further inferences given the Complainant has not provided any further evidence to challenge what the Respondent says about the legitimate business he says he established in 1998 and which still exists today.
In these circumstances it accordingly follows that paragraph 4(c) (i) (and possibly (ii)) above apply and the Complainant has failed to establish that the Respondent lacks a legitimate interest. C. Registered and Used in Bad Faith
The difficulty that the Complainant faces in this case is that the Disputed Domain Name was registered in 1998 but the Complainant did not register the term SOTI as a trademark until 2011. The Complainant in effect asserts that its unregistered trademark rights predate the Respondent and enable it to establish bad faith. The difficulty with this argument is expressly identified in WIPO Overview 2.0 which states in paragraph 1.7 (in relation to establishment of rights, but the consideration is equally applicable when unregistered rights are relied upon as establishing bad faith grounds):
“1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”.
In the present case all the Complainant has done is to provide a conclusory assertion of unregistered rights without any evidence at all to support that the Disputed Domain Name was registered and is being used in bad faith. The Panel in these circumstances concludes that the Complainant has not established its case and in particular has not produced any evidence that would displace the Respondent’s case that he had never heard of the Complainant or its SOTI trademark when he registered the Disputed Domain Name. If that was the case he cannot have registered the Disputed Domain Name in bad faith.
The Complainant also says the Respondent’s website “has purposely been done in a manner to create confusion and to dilute and harm the brand and good will of the Complainant”. The Complainant has not put in evidence any further material to support this allegation. The Panel has however visited both the Complainant’s website and that of the Respondent and has not been able to see anything which supports this allegation. The content on the Respondent’s website has been described above and while that website appears to be rather amateurish and unfinished, nowhere that the Panel can see is there any content that is directed at the Complainant or which imitates or takes advantage of anything on the Complainant’s website (apart from the fact of the similarity between the use of the term SOTI as an acronym for the company “Strategic Outsource Technologies Inc.” and the Complainant’s name).
The Complainant suggests the price of USD 150,000 the Respondent asked in 2012 for the Disputed Domain Name, having been approached by the Complainant, is indicative of bad faith registration and use. The Panel does not necessarily agree. Whilst a high price may in some circumstances support a finding of bad faith, where a person has registered a domain name in good faith it is in principle entitled to seek whatever price it may want to transfer that domain name to a third party. The record here indicates that the Respondent registered the Disputed Domain Name without any knowledge of the Complainant, simply because as it corresponded to the initials of his company. When many years later he was approached by the Complainant seeking to purchase the Disputed Domain Name he was entitled to ask whatever price he thought warranted. It is self-evident that a person who fortuitously finds itself in possession of a domain name that corresponds to the name of a large company, where the domain name was registered in good faith, is likely to be in a good negotiating position and may well seek a high price. The Panel does not find the appraisal valuation the Complainant has placed in evidence as helpful in relation to this issue as there is no evidence that this appraisal takes account of this factual situation.
The Complainant also relies upon what it says are other similar domain names the Respondent registered but allowed to lapse. These would appear from the correspondence to be and . Given that these seem to the Panel to be names which could entirely legitimately relate to the business of the Complainant’s company in developing websites suitable for viewing on mobile devices the Panel does not find this allegation, even if true, assists the Complainant’s case.
It follows that the Panel declines to find that the Disputed Domain Name has been registered and is being used in bad faith. The third condition of paragraph 4(a) of the Policy has not been fulfilled. 7. Reverse Domain Name Hijacking
Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Rules, paragraph 15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse - see Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork,WIPO Case No. D2013-1603. Further although the Respondent has not in terms requested a finding of RDNH he has said that “the Complainant has filed the Complaint against the Respondent as a frivolous act merely seeking to harass the Respondent and/or to pressure the Respondent to relinquish his rights under duress or neglect same in its response to the Complainant's action”. This seems to the Panel to amount in substance to an allegation of RDNH.
In the present case the Panel considers the case is finely balanced but ultimately has decided such a finding is not appropriate. It is the case that the Complainant makes no proper attempt to deal with what was readily apparent and indeed recorded in the Complaint – the Respondent registered the Disputed Domain Name long before the Complainant registered its SOTI trademark. No attempt has been made to explain how or why the Respondent should have been aware of the Complainant’s alleged business under the SOTI mark at the time the Disputed Domain Name was registered. It must have been apparent to the Complainant that the Respondent would say he was operating a bona fide business called “Strategic Outsource Technologies Inc.”, and that he independently chose the Disputed Domain Name as corresponding to an acronym for that business. However, it seems to the Panel that the Complainant’s failure to address this issue may be as a result of a misapprehension on the Complainant’s part as to what it has to show. The Panel also has noted that the nature and content of Respondent’s website (as described above) does appear to be rather odd, and provides at least some support for the Complainant concluding there was a case to be answered. The Panel also notes the Respondent has not provided any further statement responding to the Complainant’s Supplemental Statement. Taking all of this together the Panel does not think it appropriate to conclude this case was brought in bad faith.
In all the circumstances the Panel therefore declines to find that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 8. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: May 23, 2017
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