Complainant is Bethel International, Inc. of Fayetteville, North Carolina, United States of America (“United States, represented by Chestek Legal, United States.
Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States and Kim Kim of Fayetteville, North Carolina, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2018. On September 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 10, 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 September 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not file any amendments to the Complaint.
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 Respondent of the Complaint, and the proceedings commenced on September 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2018.
Due to an administrative oversight, on October 5, 2018 the Center forwarded the Notification of Complaint to an additional email address displayed on the website under the Domain Name, allowing an additional 5 days for Respondent to indicate whether it wished to participate in these proceedings. The Center received an email communication from Respondent on October 10, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 15, 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 sells collegiate apparel under the fanciful trademark SANDOL. Complainant holds registrations for the SANDOL mark with the United States Patent and Trademark Office (“USPTO”), including USPTO Reg. No. 3,153,835 dated October 10, 2006, in connection with purses and handbags in Class 18 with a first use in commerce of April 11, 2004.
Complainant registered the Domain Name in July 1, 2009 to market its wares on the Internet. At Complainant’s website, the phrase “welcome to ” appeared prominently.
For reasons not entirely clear from the record, Complainant’s registration lapsed in 2018 and Complainant discovered in August 2018 that the Domain Name resolved to a new website not under its control.
The Domain Name currently resolves to a website stating that the Domain Name is for sale for USD 17,559. The site also states, under the header “Why ESANDOL.COM?”: “As a national leading brand in collegiate apparel, SandolB recently sold for $12,427.00 after a 2-week bidding war. Get this premium domain name today!”. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not submit a formal response, but sent the Center an email on October 10, 2018, stating in full: “I have no idea why this is under dispute as this domain name was originally purchased by us during their redemption period.” 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark SANDOL through registration and use. The Panel finds that the Domain Name is confusingly similar to the SANDOL mark. The Domain Name fully incorporates that fanciful mark and merely adds the prefix “e” (which commonly denotes “electronic” and is suggestive of Internet commerce).
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate or defend its bona fides vis-à-vis the Domain Name. As noted above, Respondent merely stated that it purchased the Domain Name “during their [sic] redemption period”. This email to the Center was sent via the email address “sandol4sale@”.
All the record evidence indicates that Respondent somehow acquired the Domain Name within the past few months after Complainant had owned it and had been using it for years as its main commercial website to sell SANDOL products online, and that Respondent promptly put the Domain Name up for sale at a considerable price referencing the Sandol brand and its activities in the area of collegiate apparel. There is nothing in the record to support a finding that Respondent has any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates here its discussion above in the “rights or legitimate interests” section as a basis for finding bad faith. The Panel concludes that Respondent more likely than not had Complainant’s fanciful SANDOL mark in mind when registering the Domain Name, especially given the fact that Respondent’s website refers to collegiate apparel – the goods that Complainant sells under the SANDOL mark. It is also obvious from the undisputed record here that Respondent is seeking to sell the Domain Name to Complainant on the basis of its trademark value for profit, which constitutes bad faith within the meaning of the above-quoted Policy, paragraph 4(b)(i).
Complainant has established Policy, paragraph 4(a)(iii). 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.
Robert A. Badgley
Sole Panelist
Date: October 16, 2018
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