Complainant is Stephen Curtin, Shore Digital LLC of Edison, New Jersey, United States of America (“United States”), represented by Gearhart Law, United States.
Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States / Frank Gorman of Seaside Heights, New Jersey, United States. 2. The Domain Name and Registrar
The disputed domain name (the “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 May 8, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 9, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 14, 2018. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 16, 2018.
The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on May 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 11, 2018.
The Panel observed that, according to the WhoIs registration record, the Domain Name was registered on December 28, 2002. Accordingly, the Panel issued its Administrative Panel Procedural Order No. 1 on July 5, 2018 requesting that Complainant clarify and explain its statements in the Complaint that (i) “[t]he legally-effective registration of the domain name in dispute in this proceeding, (the “Disputed Domain”) is June 14, 2013” and (ii) “[t]he Respondents registered the Disputed Domain in July 2013”. Complainant was requested to submit its additional submission in reply to the order by July 11, 2018, while Respondent, who had not submitted a response in the case, was permitted to submit a reply to Complainant’s additional submission not later than July 18, 2018. Complainant submitted its response on July 5, 2018, in which it submitted a revised Complaint (the “Revised Complaint”). Respondent did not submit any additional submission in response to the Procedural Order No 1.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 13, 2018. 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 is the owner of the United States trademark, SHORE DIGITAL, Reg. No. 4784177, (the term “digital” disclaimed) for a range of digital web strategy services. Complainant applied for the SHORE DIGITAL mark on December 30, 2013, with a date of first use in commerce as of July 1, 2013.
Complainant’s founder and president, Stephen Curtin, is a resident of New Jersey. Complainant began advertising and offering business services across the United States using the SHORE DIGITAL mark in 2013, spending hundreds of thousands of dollars marketing Shore Digital products. Complainant’s sales have been strong in the New Jersey area. Complainant has made use of the SHORE DIGITAL mark since July 2013. Complainant established a website to market its products, which became operational in July 2013. After launching the website, Complainant invested in local and online marketing campaigns, including banner advertising, targeted email campaigns, mass mailers, yellow pages, word of mouth, radio, and through print-ads at local businesses. Complainant’s business has been a commercial success and has grown to employ many individuals and generate millions of dollars in annual sales.
Complainant owns various “Shore Digital” domain names, including:
; ; ; ; ; ; ; ; and .
The Domain Name was registered on December 28, 2002 and resolves to a website displaying the following: “shore digital”, “you get what you give”, “home”, “projects”, “contact”, “contact us: […]@”, “you think it and we’ll design it” and “2014 shore digital apparel”. The links on the website are non-operative. 5. Parties’ Contentions A. Complainant
i. Identical or confusingly similar
Complainant has a registered United States trademark for its SHORE DIGITAL mark. Complainant states that its trademark registration establishes its exclusive right to use the SHORE DIGITAL mark in the United States.
Complainant indicates that it has thousands of clients across the United States, and the SHORE DIGITAL mark has become distinctive and well-known since July 2013. Complainant states that individuals and other entities have come to recognize Complainant’s SHORE DIGITAL mark as a distinctive identifier. The mark has become associated in the mind of the purchasing public with Complainant. Complainant contends that the mark is well-known throughout the United States and has become famous, with the mark acquiring secondary meaning.
Complainant further states that confusing similarity is self-manifest in this case. The Domain Name wholly encompasses the SHORE DIGITAL mark in which Complainant has registered trademark rights. The test for confusing similarity considers several factors, including, similarity in appearance, sound, connotation, and commercial impression, as well as the nature of the services offered under the mark at issue and the dominant textual elements of the mark.
ii. Rights or legitimate interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name and that Respondent registered it in bad faith for the purpose of depriving Complainant of its use and to benefit from the sale of services similar to those of Complainant, while using a portion of Complainant’s mark in the Domain Name, where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark. Respondent is therefore not making legitimate noncommercial or fair use of the Domain Name pursuant to Policy, paragraph 4(c)(iii).
Complainant in its initial Complaint stated that “[t]he legally-effective registration of the domain names [sic] in dispute in this proceeding, (the “Disputed Domain”) is June 14, 2013.” In response to the Panel’s Administrative Panel Procedural Order No. 1, in the Revised Complaint Complainant acknowledges that “[t]he legally-effective registration of the disputed domain name is December 28, 2002.” Complainant asserts that since that time until May 2014, when Respondent’s website in its current form first appeared, the Domain Name was not been in proper use. According to Complainant, the Internet Archive records show August 25, 2013 as the last date where the Domain Name was still not in proper use. Complainant states that May 2014 is the first time when Respondent used the Domain Name in connection with a website and did so in an improper manner. Complainant states that it sought to retrieve the Domain Name as early as July 1, 2013 in preparation for Complainant’s commercial operations, but it was unavailable for purchase as of June 14, 2013.
Complainant also contends that Respondent has not been commonly known by the Domain Name prior to the accrual of Complainant’s trademark rights. Respondent’s only interest in the Domain Name is the value ascribed to it by Complainant’s marks. The Domain Name has not been used in any commercial way, especially in connection with a corresponding United States federal trademark registration. The Domain Name (and website to which it resolves) that exists today is the same as it was since May 2014 and has not changed in appearance, nor has Respondent done any business of any kind due to lack of the Domain Name’s website having ecommerce capabilities.
iii. Registered and used in bad faith
Complainant asserts that Respondent has not been commonly known by the Domain Name, has not carried on any legitimate business using it, and the Domain Name was registered in bad faith with knowledge of Complainant’s trademark and rights.
Complainant argues that Respondent registered the Domain Name for the purpose of confusing Internet users seeking the services of Complainant. Respondent’s registration of the Domain Name is an attempt to prevent Complainant from reflecting its mark in the Domain Name and from benefiting from the goodwill and notoriety that Complainant has established in its SHORE DIGITAL mark. Respondent has sought to unjustly enrich itself by misappropriating Complainant’s goodwill in its SHORE DIGITAL mark and creating a likelihood of confusion with Complainant’s mark, at the expense of Complainant. This is precisely the type of wrongful conduct that has been found to be bad faith in numerous UDRP proceedings. Complainant also urges that Respondent registered the Domain Name for the purpose of depriving Complainant of use of the Domain Name and its mark online, and benefiting financially from the sale of the Domain Name to Complainant in violation of Policy, paragraph 4(b).
Complainant asserts that the evidence suggests that, even today, the Domain Name is being used as a front for Respondent’s bad faith so that Respondent can profit from its sale or transfer. In particular, the current webpage linked to the Domain Name is a bad faith attempt at creating a seemingly legitimate front in order to fool consumers that actual business is transpiring, when it is not. There is no commerce of any kind on the webpage linked to the Domain Name, just a contact number added only to confuse consumers. In addition, the Domain Name has never had any real use of any kind, especially since Complainant has been in business since 2013. Complainant states that the current website linked to the Domain Name has not changed since May 2014 and was likely created to appear as if there is a legitimate claim to the website, when there is none. The site has not been changed or been updated in nearly 5 years.
Complainant contends that in addition to amounting to bad faith registration and use of the Domain Name under the Policy, Respondent’s use of the Domain Name also amounts to infringement of Complainant’s SHORE DIGITAL mark under the United States Lanham Act. Specifically, Respondent violates United States federal law relating to cyber piracy, trademark infringement, trademark dilution, and unfair competition.
Complainant requests that the Panel recognize Complainant’s rights to the Domain Name and therefore transfer it to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in his claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its SHORE DIGITAL trademark based on its trademark registration in the United States and use of the mark beginning in July 2013. Further, the Panel determines that the Domain Name is identical to the Complainant’s mark, as the Domain Name incorporates the mark in its entirety and adds no other element, while merely omitting the space between the two words “shore” and “digital” that comprise Complainant’s mark.
Accordingly, the Panel finds that that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Regarding the second element of the Policy, section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, the Panel finds that Complainant has made out a prima facie case, and that Respondent has failed to respond to the Complaint. The Panel finds that Complainant has introduced sufficient evidence that Respondent is not commonly known by the Domain Name or the SHORE DIGITAL trademark, that Complainant did not authorize Respondent to use its mark, and that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the evidence indicates that Domain Name was “parked” (or essentially unused) from the time of its registration in December 2002 until approximately May 2014. At that time, a website was created for the Domain Name, which has remained unchanged since that time until the filing of the Complaint. Complainant alleged that Respondent’s website has no e-commerce capabilities, has remained completely static, and is merely a front. Respondent submitted no Response in this case to attempt to refute any of these allegations, nor did Respondent submit any additional submission, although it was invited to do so.
The Panel determines that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. In the Panel’s opinion, there is nothing in the present use of the Domain Name by Respondent or more generally in the circumstances of its registration and use, which indicates that Respondent has established any right or legitimate interest in the Domain Name.
The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith.
Here, the Panel finds that Complainant has failed to establish that the Domain Name was registered and is being used in bad faith. The evidence indicates that the Domain Name was registered in December 2002, more than 10 years before Complainant had first established its business and sought to acquire trademark rights in its SHORE DIGITAL mark. Although Complainant has contended that Respondent acquired the Domain Name with knowledge of Complainant’s trademark and rights and in an effort to take advantage of Complainant’s SHORE DIGITAL mark, Complainant has provided no evidence in support of this contention. The Panel is aware that Respondent, like Complainant, is located in New Jersey. However, there is no evidence that at the time when the Domain Name was registered in December 2002, Respondent was aware of Complainant and targeted its SHORE DIGITAL mark years before Complainant started using it. Further, although a website for the Domain Name was created sometime between August 2013 and May 2014 (whereas prior to this time the Domain Name was apparently linked to a “parked” website created by the Registrar), Complainant has submitted no evidence to show that this change in use of the Domain Name may be taken as evidence of a transfer in ownership of the Domain Name between August 2013 and May 2014. If the case were to hinge on this fact, the Panel would have expected Complainant to argue this point with substantial evidence. There is, however, nothing in the record to indicate any change in the Domain Name’s ownership or registration during this period or any earlier period following registration of the Domain Name in December 2002.
Regarding bad faith use, the Panel observes that the Domain Name is currently used in connection with a website that has appeared to remain static since approximately May 2014. Prior to this time, the evidence from the Internet Archive records suggests that the Domain Name was parked by the Registrar. The change in use of the Domain Name by establishing a website in approximately May 2014, may imply, but without more, does not establish bad faith use. Since that time, the website linked to the Domain Name uses a logo that does not resemble Complainant’s logo. The website also includes the phrases “2014 Shore Digital Apparel” and “You think it and we’ll design it”, and features two photos of graphically designed T-shirts. The impression given is that the website is used by a company that designs and sells T-shirts for consumers, which is a different line of business from that of Complainant’s business. However, as Complainant has noted, none of the links on the website work and it appears to be non-functioning. As noted above, this lack of a functioning website, along with the failure of Respondent to respond to Complainant’s allegations, justified the Panel’s determination that Respondent has not established any right or legitimate interest in the Domain Name. However, although the website is not functioning, there is no overt evidence of bad faith use of the Domain Name by Respondent in an attempt to take advantage of Complainant’s SHORE DIGITAL mark. Nor has Complainant provided any evidence that Respondent has engaged in a pattern or practice of registering Domain Names that correspond to third-party trademarks in an effort to block use of those marks by the mark owners or otherwise take unfair advantage of those marks.
In sum, Complainant, despite making assertions of bad faith registration and use, has failed to provide any sufficient evidence to that effect. Moreover, Complainant has alleged that Respondent’s use of the Domain Name violates United States federal trademark law. However, the Panel can only evaluate Complainant’s case under the Policy, and therefore makes no finding regarding Complainant’s allegation concerning violation of United States trademark law.
In conclusion, the Panel determines that, for all of the above reasons, Complainant has not satisfied the third element of the Policy 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: July 23, 2018
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