Complainant is Summit Bicycles, United States of America (“United States”), represented by Morrison & Foerster, LLP, United States.
Respondent is Privacy.co.com - 250a3, United States / If Network, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 18, 2020, 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 November 19, 2020, 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 November 20, 2020. The Center verified that the Complaint, together with the amended 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 November 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2020. The Center appointed Robert A. Badgley as the sole panelist in this matter on December 22, 2020. 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 a bicycle distributor with several locations in northern California. Complainant was incorporated in 1995. Complainant sells and rents bicycles and related gear, and repairs bicycles. According to the Complaint, Complainant has been using the common law trademark SUMMIT BICYCLES since 1992, and has steadily increased its advertising, customer base, and sales under SUMMIT BICYCLES. This date of first use is also reflected in the trademark application filed by Complainant with the California Secretary of State’s Office on September 3, 2020. According to the sworn Declaration of Complainant’s Chief Executive Officer Ian Christie, Complainant has been using the common law trademark SUMMIT BICYCLES in connection with Complainant’s retail stores since 2002. CEO Christie states that Complainant’s annual sales have increased substantially, in terms of both unique customers and revenues, from 2010 to 2020 (by the latter measure, the annual revenues went from USD 3.7M in 2010 to USD 12.4M for the first nine months of 2020). Annexed to the Complaint are data concerning Complainant’s increasing advertising expenditures, as well as several unsolicited media articles concerning Complainant’s business. The Domain Name was registered on February 6, 1997. The Domain Name resolves to Complainant’s current commercial website. According to Complainant, it had previously contracted with a technology firm (hereinafter “XH”) for various purposes, including “to assist in maintaining” the Domain Name. Unbeknownst to Complainant, however, XH actually registered the Domain Name through a third party in the Philippines (“Respondent”). Complainant asserts that XH never disclosed this fact to Complainant. Although the Domain Name resolves to Complainant’s website, Complainant cannot control the site at this time because XH is unresponsive and Respondent has no relationship with Complainant. On several occasions between 2017 and 2019, Complainant corresponded with an XH employee seeking a transfer of the Domain Name, but XH failed to take any action. On August 5, 2020 and August 25, 2020, Complainant’s counsel sent letters to XH, asserting trademark rights and requesting a transfer of the Domain Name. XH did not respond to these missives. Upon filing the Complaint in this proceeding, Complainant learned that Respondent was the actual registrant of the Domain Name. As noted above, Respondent did not respond to the Complaint or otherwise participate in this proceeding. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 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 (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 trademark SUMMIT BICYCLES, for purposes of the Policy, through use demonstrated in the record. The Panel also concludes that the Domain Name is identical to that mark. 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 The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to dispute Complainant’s allegations or otherwise articulate or prove its bona fides vis-à-vis the Domain Name. On the undisputed record before the Panel, Complainant plausibly alleges that it contracted with XH to register the Domain Name on Complainant’s behalf and otherwise facilitate the operation of Complainant’s commercial website, and XH delegated, without Complainant’s knowledge or consent, the Domain Name registration task to Respondent. Complainant also plausibly alleges, and Respondent does not deny, that relations between XH and Respondent have deteriorated and Respondent has failed to transfer the Domain Name registration to XH or Complainant. Under these circumstances, the Panel cannot identify any rights or legitimate interests that Respondent could possibly claim with respect to the Domain Name. Complainant has established Policy paragraph 4(a)(ii). C. Registered or 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 (and XH for that matter) has registered and used the Domain Name in bad faith, at least as far as that concept operates under the Policy. The Panel incorporates its discussion above in the “rights or legitimate interests” section. At bottom, Respondent is a party holding the Domain Name, without any apparent reason supporting Respondent’s registration of the Domain Name in its name as opposed to Complainant’s, which was, as far as the record shows, never intended to be registered on behalf of any party other than Complainant (it has apparently been used only to host Complainant’s website). Through no fault of its own, Complainant is being deprived of control over its own website because XH and/or Respondent have refused to communicate with Complainant. The Panel also finds persuasive a case cited in the Complaint, George-Marie Glover and George-Marie Glover, LLC v. Cherie Pogue,WIPO Case No. D2001-0600. In that case, the complainant contracted with the respondent to design and host the complainant’s website, but learned that the respondent had registered the domain name in her own name rather than the complainant’s. The respondent then refused to transfer the domain name to the complainant, and refused to respond to any of the complainant’s communications. The panel in the Glover case ordered the transfer of the domain name, and cited as part of the respondent’s bad faith her failure to respond to the complainant’s communications. In the present case, the non‑responsiveness of XH may be imputed to Respondent, as the latter, according to the undisputed record here, is in some sort of agency relationship, albeit apparently in disrepair, with the former. 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 Robert A. Badgley
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(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.
Sole Panelist
Date: December 27, 2020
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