Sabio Inc. filed a UDRP against the domain AppScience.ai based on the U.S. trademark registration Nos. 5328169 for APP SCIENCE, registered on November 7, 2017; and 6422987 for APP SCIENCE, registered on July 10, 2021.
The Complainant operates from the domain AppScience.inc. The Respondent made an attempt to dispute the mark’s strength, calling it generic and descriptive. He claimed that the original development plans for the disputed domain fell through and thus there was no malicious intent in registering the domain.
These claims, however, were not backed by any proof, according to the WIPO panelist who took note of this and also of the Respondent’s attempt to sell the domain to the Complainant for up to $30,000 dollars:
“Respondent has not provided evidence that he is commonly known by the disputed domain name. Respondent in fact admits in the Response filed that the disputed domain name was registered “for the purpose of starting a software consulting company”. This is a field which overlaps with and is similar to the kind of services specified in Complainant’s U.S. federally registered trademarks. While Respondent claims that he is retaining the disputed domain name as he intends to use it for his business/projects in relation to education, he has failed to furnish any evidence to support these claims. Respondent brought no evidence of his “work with several nonprofits organizations in the [sic.] education” or any other evidence showing validity in his statement that he has an “intention of providing educational services in the field of artificial intelligence”. These assertions are in fact contradicted by evidence provided by Complainant of Respondent’s repeated attempts to sell the disputed domain name to Complainant, the highest price tag being US$30,000, which is significantly higher than any out-of-pocket registration costs which would have been incurred by Respondent. There is no evidence of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain.”
Final decision: Grant the transfer of the domain AppScience.ai to the Complainant.
Sabio Inc. v. Bhuvan Pasham
Claim Number: FA2406002104028
PARTIES
Complainant is Sabio Inc. (“Complainant”), represented by Thomas Dietrich of The McArthur Law Firm, PC, California, USA. Respondent is Bhuvan Pasham (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is appscience.ai, registered with NameCheap, Inc.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Francine Siew Siew Ling Tan as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 26, 2024; Forum received payment on June 26, 2024.
On June 27, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the appscience.ai domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 28, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2024, 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@appscience.ai. Also on June 28, 2024, 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.
A timely Response was received and determined to be complete on July 17, 2024.
On July 19, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Francine Siew Ling Tan as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
1. The disputed domain name is identical to the APP SCIENCE trademark in which the Complainant has registration rights. Complainant is in the business of designing and providing software applications. It has been using the APP SCIENCE mark in commerce in connection with the said business since no later than March 23, 2017. Complainant offers its software development, marketing, and advertising services through its official website at www.appscience.inc. Complainant is the registered owner of U.S. trademark registration Nos. 5328169 for APP SCIENCE, registered on November 7, 2017; and 6422987 for APP SCIENCE, registered on July 10, 2021.
2. Respondent has no rights or legitimate interests in the APP SCIENCE trademark. Complainant has not authorized or licensed Respondent to use its APP SCIENCE mark. Respondent first began using the “appScience” mark in connection with competing software development and information technology services and applications in or about November 2018. Respondent applied to register the “appScience” trademark in 2019 for Class 42 services. The application was rejected by the USPTO due to the likelihood of confusion with Complainant’s APP SCIENCE trademark registration and the respective parties’ services are similar. Complainant sent a cease-and-desist letter in June 2020 to Respondent demanding that he cease all use of the “appScience” mark. Respondent stopped using the “appScience” trademark thereafter but after several years, he began using the disputed domain name to direct to the homepage of another company that Respondent founded and of which he was CEO.
3. Respondent has registered and used the disputed domain name in bad faith. Complainant registered and has been using its APP SCIENCE trademark long before Respondent registered the disputed domain name. Respondent has been aware of Complainant’s APP SCIENCE mark and has attempted to sell the disputed domain name to Complainant several times, with the latest offer at $30,000. Respondent is not actually using the disputed domain name for anything other than to redirect Internet traffic to his affiliated company. Despite having received refusals from the USPTO in relation to his “appScience” trademark application and Complainant’s cease-and-desist letter in 2020, Respondent has continued to use Complainant’s APP SCIENCE trademark. Respondent has also recently redirected the disputed domain name to what appears to be his personal software-related website, execoder.com. However, he could return to redirecting the disputed domain name to his software company at any time.
B. Respondent
Respondent’s Contentions:
1. Respondent registered the disputed domain name on November 15, 2018, for the purpose of starting a software consulting company in Texas. Respondent’s business involves technology consulting and application development for the private equity industry. Respondent’s business merged with another business, and it abandoned its trademark application for “appScience”. Respondent retained the domain name for future use with the intention of providing educational services in the field of artificial intelligence, since he works with several nonprofit organizations in education.
2. Respondent acknowledges that the disputed domain name incorporates the term “appscience,” which is similar to Complainant’s APP SCIENCE trademark. However, the disputed domain name is not identical to the trademark due to the addition of the generic Top-Level Domain (“gTLD”) “.ai” and the absence of a space between “app” and “science”. The gTLD “.ai” signifies the domain’s connection to artificial intelligence, a field relevant to Respondent’s business.
3. The term “app science” is generic and descriptive in the tech industry.
4. The disputed domain name does not infringe on Complainant’s trademark rights as the site to which it resolves does not offer any similar products to that covered by the APP SCIENCE trademark registration.
5. Respondent was not aware of Complainant’s APP SCIENCE trademark rights at the time the disputed domain name was registered. There was no intention to capitalize on the goodwill associated with Complainant’s trademark, or to mislead consumers. Respondent has not used the disputed domain name to offer goods and services that are confusingly similar to those offered by Complainant.
FINDINGS
(a) The disputed domain name is confusingly similar to the trademark APP SCIENCE in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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.
Identical and/or Confusingly Similar
Complainant has established it has rights in the APP SCIENCE trademark. The entirety of Complainant’s APP SCIENCE trademark is captured within the disputed domain name and recognizable, with no alterations.
The gTLD is a technical requirement of domain name registrations and not relevant to the issue of whether the domain name in dispute is identical or confusingly similar to the Complainant’s trademark. (WIPO Jurisprudential Overview 3.0, section 1.11.2.) Respondent’s argument on this distinction is therefore rejected. The absence of a space between the elements “app” and “science” in the disputed domain name does not remove its identity with Complainant’s APP SCIENCE trademark.
The Panel therefore finds that the disputed domain name is identical to Complainant’s APP SCIENCE trademark.
Policy ¶ 4(a)(i) has therefore been established.
Rights or Legitimate Interests
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent’s use of its APP SCIENCE trademark and the registration of a domain name containing said trademark.
Accordingly, the burden of production of the existence of rights or legitimate interests in the disputed domain name shifts to Respondent. Policy ¶ 4(c) sets out examples of circumstances in which a respondent may demonstrate it has rights or legitimate interests in a domain name. None of these have been demonstrated by Respondent.
Respondent has not provided evidence that he is commonly known by the disputed domain name. Respondent in fact admits in the Response filed that the disputed domain name was registered “for the purpose of starting a software consulting company”. This is a field which overlaps with and is similar to the kind of services specified in Complainant’s U.S. federally registered trademarks. While Respondent claims that he is retaining the disputed domain name as he intends to use it for his business/projects in relation to education, he has failed to furnish any evidence to support these claims. Respondent brought no evidence of his “work with several nonprofits organizations in the [sic.] education” or any other evidence showing validity in his statement that he has an “intention of providing educational services in the field of artificial intelligence”. These assertions are in fact contradicted by evidence provided by Complainant of Respondent’s repeated attempts to sell the disputed domain name to Complainant, the highest price tag being US$30,000, which is significantly higher than any out-of-pocket registration costs which would have been incurred by Respondent. There is no evidence of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain.
Respondent has therefore failed to establish he has rights or legitimate interests in the disputed domain name.
Policy ¶ 4(a)(ii) has therefore been established.
Registration and Use in Bad Faith
The Panel is persuaded in this case and following the finding of Respondent’s absence of rights or legitimate interests in the disputed domain name, that the domain name was registered and is being used in bad faith. The policy aim of the UDRP is to address situations where a registrant of a domain name takes unfair advantage of or otherwise abuses a complainant’s trademark.
The Panel is persuaded that the circumstances of this case fall squarely within Policy ¶ 4(b)(i) which states that evidence of a respondent’s registration and use of a domain name in bad faith can be found by a panel to be present where circumstances indicate that the respondent registered the domain name primarily for the purpose of selling the domain name to the complainant who is the owner of the relevant trademark for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
The Panel also finds bad faith registration and use on the evidence, per Policy ¶ 4(b)(iv). Considering the circumstances in totality, including Respondent’s likely knowledge of Complainant’s rights, the distinctiveness of Complainant’s registered trademark, Respondent’s threats to sell the disputed domain name to another third party who has made another offer, and failure of Respondent to present a credible evidence-backed rationale for registering the domain name (see WIPO Jurisprudential Overview 3.0, section 3.1.1), the Panel concludes that Respondent has registered and used the disputed domain name in bad faith.
Policy ¶4(a)(iii) has therefore been established.
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 appscience.ai domain name be TRANSFERRED from Respondent to Complainant.
Francine Siew Ling Tan, Panelist
Dated: July 30, 2024
