Complainants are Sculpd Ltd (UK) & Sculpd Limited (USA), United Kingdom (“UK”), represented by John Matthew Clements, UK. According to Complainants, they are related and owned by the same shareholders. The Panel will refer to these two companies in the singular as “Complainant.”
Respondent is Andrew Ford, Australia, represented by Law Office of Michael P. Eddy, United States of America (“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 February 2, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 2, 2021, 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 February 4, 2021 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 February 8, 2021. 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 February 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. The Response was filed with the Center on March 1, 2021. Complainant submitted a supplemental filing on March 15, 2021. Respondent submitted a supplemental filing on April 13, 2021. In its discretion, the Panel has considered both Parties’ supplemental submissions. The Center appointed Robert A. Badgley, David Stone, and Debrett G. Lyons as panelists in this matter on April 16, 2021. 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 Parties have made numerous allegations and arguments against each other in this acrimonious proceeding, some of which are extraneous to the disposition of this case. The Panel will endeavor to confine the presentation of the factual background and argument sections to those points necessary to decide the case under the UDRP. Incorporated in the United Kingdom on April 16, 2020, Complainant produces and sells various arts and crafts supplies, such as paints and accessories, potters’ clay, painting and pottery kits, and so forth. According to Complainant, it “began trading under the name Sculpd” in the United Kingdom on April 14, 2020, in Australia (Respondent’s country) on April 25, 2020, and in the United States on April 23, 2020. Complainant operates a commercial website at “www.sculpd.co.uk”. Respondent, whose company is also in the business of selling pottery supplies and kits, alleges in this proceeding that Complainant’s website “rips” Respondent’s website at “www.crockd.com”, i.e., that Complainant’s site imitates the style and content of Respondent’s site. Complainant holds a United Kingdom trademark registration for the mark SCULPD. Specifically, Complainant holds United Kingdom Reg. No. 3497606 for the mark SCULPD, in class 16 for “arts and craft paint kits; modeling clay,” and in class 21 for “pottery”. The registration was issued on September 4, 2020, with a filing (i.e., effective) date of June 5, 2020. The Domain Name was originally registered in April 2017 by a third party. Respondent acquired the Domain Name on October 29, 2020. The Domain Name does not resolve to an active website. According to Respondent, he commenced negotiations for purchase of the Domain Name with the prior owner on May 29, 2020. Respondent asserts in the initial Response: “Respondent had no knowledge of the use of the term [SCULPD] by any party (including the Complainant) prior to its initiation [on May 29, 2020] of negotiating to purchase the disputed domain name. Respondent also had and has no knowledge of Complainant’s actual dates of use in commerce of the term with the claimed goods…” With its supplemental filing, Complainant introduced into the record a May 24, 2020 text message between Respondent and a third party (“JC”), in which Respondent stated: “You know how I was telling you last night that we came across a brand in the UK that fully ripped us … sculpd?” In its supplemental response, Respondent does not deny the contents of the foregoing text message. Instead, Respondent insists that he could not have known that Complainant had actually shipped products under the trademark SCULPD prior to Respondent’s initiation (on May 29, 2020) of negotiations to purchase the Domain Name from the prior owner. On January 19, 2021, a party apparently under Complainant’s control or acting at Complainant’s behest, with a UK business address identical to Complainant’s UK address, filed a UK trademark application for CROCKD (which is Respondent’s trademark). This application was later withdrawn. After the Complaint in this proceeding was filed on February 2, 2021, the Parties resumed discussions to resolve this dispute. The Panel does not find these discussions relevant to the disposition of this case under the UDRP, and hence the Parties’ respective allegations about the content and importance of these post-Complaint discussions will not be set out here. 5. Parties’ Contentions A. Complainant Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent denies having registered the Domain Name in bad faith and asserts that Complainant had no protectable trademark rights of which Respondent was aware at the time he registered the Domain Name. 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 trademark SCULPD through the UK trademark registration referred to above. The Panel also concludes that the Domain Name is identical to that mark since it merely adds a generic Top-Level Domain “gTLD” to the trademark. 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 lacks rights or legitimate interests in respect of the Domain Name. Above all, the Panel finds that Respondent lacks credibility when he claims to have had no knowledge of Complainant’s trademark rights at the time he registered the Domain Name (on October 29, 2020). This holds true even if one accepts that Respondent actually commenced negotiations to buy the Domain Name from the prior owner five months earlier, on May 29, 2020. This is because of the above-quoted May 24, 2020 text message in which Respondent refers to “a brand in the UK that fully ripped us…sculpd.” This text, of course, predates any Domain Name purchase negotiations by five days, and hence belies Respondent’s claim that he lacked knowledge of Complainant’s trademark rights. Respondent raises various points of trademark law, including the fact that his negotiations started on May 29, 2020, a week before Complainant even filed its UK trademark application on June 5, 2020. The elements of a claim under the UDRP are not, however, coextensive with the trademark law of various jurisdictions. As such, a defense under the UDRP may or may not be a viable defense under some nation’s trademark law, and a defense under trademark law may or may not be a viable defense under the UDRP. A decision under the UDRP tends to focus on the probable state of a respondent’s knowledge at the time of domain name registration. In this case, while Respondent argues that Complainant had no protectable trademark rights as of May 29, 2020, and that Complainant’s evidence of its sales since its formation in April 2020 is flimsy, these points are ultimately not as important as Respondent’s own knowledge, as confirmed in the May 24, 2020 text message. This message refers of “a brand in the UK.” The word “brand” is a colloquial term for a trademark. The Panel concludes, on the record presented here, that Respondent clearly was aware of Complainant’s “brand” – i.e., trademark – no later than May 24, 2020. Further, Respondent apparently viewed Complainant at that time as a potential competitor, since, in Respondent’s mind, Complainant had “ripped” Respondent’s website. Respondent also has no viable explanation why he would have registered the Domain Name, when his own competing firm was using the trademark CROCKD. Respondent is not commonly known as SCULPD, and Respondent has not shown that he was planning to make any type of noncommercial or fair use of the Domain Name without intent to divert consumers to Respondent’s (competing) website. In sum, the Panel concludes that Respondent registered the Domain Name as a retaliatory measure to respond to Complainant’s perceived “ripping” of Respondent’s website content, and as a means of thwarting an incipient competitor in the field of online art supplies and art/craft kits. Such conduct does not give rise to a legitimate interest in the Domain Name under the above-quoted paragraph 4(c) factors or otherwise. 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 has registered and used the Domain Name in bad faith within the meaning of the UDRP. The Panel incorporates here its discussion above in the “rights or legitimate interests” section. That discussion points directly to a bad faith finding under the above-quoted Policy paragraph 4(b)(iii), disrupting the business of a competitor. 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 Debrett G. Lyons David Stone
Presiding Panelist
Panelist
Panelist
Date: April 27, 2021
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