Speculating on filed or pending trademark applications at the USPTO can lead to a domain’s loss.
The domain Speculet.com was registered on March 2, 2019, suspiciously close to a fresh (at the time) trademark application for SPECULET, filed on February 27, 2019. The 3 day gap indicates that the registration was the result of observing a publicly-available list (“ephemeris”) of trademark applications at the USPTO.
BioGenware LLC, filers of the application, were eventually granted the registration of the SPECULET mark on June 18, 2019. At the time, trademark registrations averaged 3-4 months to completion, compared to more than 6 months until the application is allocated to an examiner, currently!
The trademark holder filed a UDRP against the domain Speculet.com. Per their response, the Respondent acquired the domain on April 4, 2021, from a list of expired domains at Dynadot. It appears that the original registrant of the domain—the domain and trademark speculator—let it expire.
The Forum (NAF) panelist did not address the Respondent’s note of a recent registration of the domain, as opposed to the one that took place in 2019:
The Respondent has not satisfactorily explained why he should be entitled to register a domain name consisting of the Complainant’s mark which has a reputation for speculums and a gTLD. SPECULET is not a dictionary word. The Respondent has been unreasonably vague in its submissions of its intentions for the Domain Name and has produced no evidence in this regard or reason for any secrecy. The Panel can only assume that there are no specific plans and there is no evidence because no such preparations have been made. Significantly the Respondent does not maintain in his Response that at the time of acquisition of the Domain Name he was not aware of the Complainant.
Final decision: Grant transfer of the domain Speculet.com to the Complainant.
BioGenware, LLC v. Gökmen KISA
Claim Number: FA2111001974693
PARTIES
Complainant is BioGenware, LLC (“Complainant”), represented by Jason A. Pittman of Dority & Manning, P.A., South Carolina, USA. Respondent is Gökmen KISA (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , (‘the Domain Name’) registered with Dynadot, LLC.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on November 24, 2021; the Forum received payment on November 24, 2021.
On November 30, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the Domain Name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@speculet.com. Also on December 6, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
The Respondent filed a Response dated December 31, 2021.
On January 5, 2021 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant’s relevant contentions can be summarized as follows:
The Complainant is the owner of the mark SPECULET registered, inter alia in the USA for speculums since December 3, 2019 with first use recorded as September 5, 2019. The trade mark was applied for Feb 27, 2019. SPECULET is a distinctive invented word not a dictionary word.
The Domain Name was registered by the Respondent March 2, 2019 only three days after the Complainant applied for its trade mark and is identical for the purposes of the Policy to the Complainant’s mark adding only the gTLD “.com”.
The Respondent has no rights or legitimate interests in the Domain Name and is not commonly known by the Domain Name or authorized by the Complainant.
The Domain Name has been offered for sale generally. It has also been offered to the Complainant for sums in excess of US$2500 a sum well in excess of the value of the Domain Name.
The Domain Name has not been used for a bona fide offering of goods or services or a legitimate noncommercial fair use.
The Respondent referred to use for a ‘project’ in an e mail but gave no details or evidence of any demonstrable preparations to use the Domain Name.
Respondent stated he owns a company that sells generic domain names, but the Domain Name does not contain a dictionary word, rather the Complainant’s trade mark which is a distinctive invented mark and the Respondent owns at least two other domain names including the trademarks of third parties. The Respondent admitted in writing that registration of the Domain Name three days after the Complainant’s trade mark application was bad faith, but claimed in an e mail to the Complainant that he did not make that registration and only acquired the Domain Name in May 2019. He has, however, produced no evidence of the same and the WhoIs record has remained the same since the registration date.
B. Respondent
The Respondent’s contentions can be summarized as follows:
Even if the Domain Name is similar to the Complainant’s mark the Complainant is not automatically entitled to the “.com” version of a SPECULET domain. Domain names are sold on a first come first served basis.
The Respondent was planning to develop a project and was looking for a domain name similar to speculate or speculation. The Domain Name was available and the Respondent got it April 4, 2021. The Respondent has not referred to the Complainant’s product on the web site attached to the Domain Name which was a standard parking page. It is not bad faith to offer a domain name to the marketplace for sale while developing the project for it as it is reasonable to sell the domain name to cover the costs of the project. The Complainant approached the Respondent. The Respondent did not approach the Complainant.
The Complainant did not register the Domain Name when it was available and now it is trying to Reverse Domain Name hijack the name.
FINDINGS
The Complainant is the owner of the mark SPECULET registered, inter alia in the USA for speculums since December 3, 2019 with first use recorded as September 5, 2019. The trade mark was applied for Feb 27, 2019. SPECULET is a distinctive invented word not a dictionary word.
The Domain Name was registered three days after the Complainant applied for its trade mark March 2, 2019. The Respondent has produced an electronic invoice saying it acquired the Domain Name from Dynadot on April 4, 2021. The Respondent is in the business of buying and selling domain names and owns at least two other domain names containing quite distinctive trademarks of third parties. The Respondent has not produced any evidence of any demonstrable preparations to use the domain name and has not given any details of its alleged project.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The Complainant owns a registration for the trade mark SPECULET registered in the USA for speculums the USA since December 3, 2019 with first use recorded as September 5, 2019. The trade mark was applied for Feb 27, 2019. The Domain Name consists of SPECULET and the gTLD “.com”.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant’s red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is identical for the purposes of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Respondent is not authorised by the Complainant and does not claim to be commonly known by the Domain Name. The Respondent’s name in the WhoIS is Gökmen KISA. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name containing the Complainant’s mark has been offered for sale for a sum well in excess of registration costs which is not a bona fide offering of goods or services or a legitimate non commercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015).
Whilst the Respondent refers to a project for which he had intended the Domain Name he has not given any details of that project or any evidence of demonstrable preparations to use the Domain Name.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not satisfactorily explained why he should be entitled to register a domain name consisting of the Complainant’s mark which has a reputation for speculums and a gTLD. SPECULET is not a dictionary word. The Respondent has been unreasonably vague in its submissions of its intentions for the Domain Name and has produced no evidence in this regard or reason for any secrecy. The Panel can only assume that there are no specific plans and there is no evidence because no such preparations have been made. Significantly the Respondent does not maintain in his Response that at the time of acquisition of the Domain Name he was not aware of the Complainant.
The Panel also notes that the Respondent is in the business of buying and selling domain names and finds it more likely than not in the light of the evidence that the Respondent acquired the Domain Name to sell it for a profit. The Domain Name containing the Complainant’s mark has been offered for sale generally. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). The Domain Name has also been offered for sale by the Respondent to the Complainant for a sum well in excess of costs of registration. If the Respondent had genuinely needed a domain name close to the word speculate or speculation for its project it could be assumed that it would not have wished to sell the Domain Name.
The timing of the registration of the Domain Name is also suggestive of bad faith, Assuming the electronic invoice presented by the Respondent correctly records the date of acquisition of the Domain Name by the Respondent as April 2019 this is still only a couple of months after the application for the trade mark by the Complainant. Registering a domain name shortly after a mark being filled with the USPTO for registration may be opportunistic bad faith per Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name shortly after the complainant filed applications to register the relevant mark the subject of those proceedings).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Reverse Domain Name Hijacking
The Panel declines to make a finding of Reverse Domain Name Hijacking as the Complainant clearly has rights in respect of the Domain Name for the purposes of the Policy.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 6, 2022
