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#Biosaphe .com : Homophone #domain safe after #UDRP fails

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The domain Biosaphe.com was challenged via the UDRP process by a company called BioSafe Systems LLC. They operate from BioSafe.com.

The phonetic match of “ph” and “f” makes these domains homophones.

The panelist noted that the Respondent made use of the domain in bona fide services before the Complainant registered their mark, which is for BISAFE with a visual mark resembling an “O”.

Despite a lack of response by the Respondent, the sole panelist at the National Arbitration Forum (Phorum?) delivered a decision favoring the Respondent, and they denied the transfer of Biosaphe.com.

Full details on this decision phollow:

The domain transfer was denied.

BioSafe Systems LLC v. Donald Clark

Claim Number: FA1907001853762

PARTIES

Complainant is BioSafe Systems LLC (“Complainant”), represented by Alex R. Sluzas of Paul and Paul, Pennsylvania, USA. Respondent is Donald Clark (“Respondent”), Utah, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <biosaphe.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Debrett G. Lyons as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 24, 2019; the Forum received payment on July 24, 2019.

On July 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <biosaphe.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2019 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@biosaphe.com. Also on July 25, 2019, 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.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On August 16, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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

Complainant asserts trademark rights in BIOSAFE SYSTEMS LLC. Complainant submits that the disputed domain name is confusingly similar to its trademark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The factual findings pertinent to the decision in this case are that:

1. Complainant sells biodegradable disease-control products;

2. Complainant is the owner of United States Patent & Trademark Office (“USPTO”) Regn. No. 4,244,351, registered November 20, 2012 for a stylized version of the mark, BIOSAFE SYSTEMS LLC;

3. Respondent has a pending trademark application Serial No. 88160611 with the USPTO, filed October 18, 2018 claiming a first use in commerce of BIOSAPHE of August 17, 2018;

4. the disputed domain name was registered on June 14, 2018; and

5. the disputed domain name resolves to a webpage showing the use of BIOSAPHE as a trademark, promoting the use and sale of products which are biodegradable.

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:

(i) the domain name registered by Respondent 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.

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.

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration with the USPTO, a national trademark authority.

As stated above, the registered mark is stylized. The Panel notes that the USPTO has indexed the mark as “BISAFE SYSTEMS LLC”, but the stylization is not so striking that the word “BIOSAFE” is obscure, an oval shaped device implying the missing letter, “O”. The Panel is prepared in this instance to treat the registered mark as effectively a word mark, BIOSAFE SYSTEMS LLC.

For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded. The residual term, “biosaphe”, is phonetically identical to the trademark. It is noted that “biosafe/biosaphe” is purely descriptive of biodegradable products (for disease-control or otherwise), something of which the Panel will have more to say, shortly. For now it is enough to observe that the “test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name” and that “[i]ssues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements.” (WIPO Jurisprudential Overview 3.0 at [1.7]).

For these reasons the Panel finds the disputed domain name to be confusingly similar to the trademark and so finds that Complainant has established the first element of the Policy.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to you 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 (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 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.

Notwithstanding the absence of a Response, the Panel finds that Respondent has rights or legitimate interests to the domain name by reason of paragraph 4(c)(i) above.

Before any notice of this dispute, Respondent had applied to register a trademark corresponding with the disputed domain name with the USPTO. That application was accompanied by examples of commercial use of the applied-for trademark. The evidence further includes screenshots of a developed website resolving from the disputed domain name. That website shows that Respondent’s agricultural bio-tech company sells products to enhance turf management programs.

Despite the similarity of the trademark and the disputed domain name, both terms are obvious choices for the parties’ goods of interest. They are for that reason of low inherent capacity to distinguish those goods. The only distinguishing feature of Complainant’s trademark is the stylization of the word “BIOSAFE” and it is very likely that this is the principal reason Complainant was able to secure registration with the USPTO of what is otherwise a descriptive mark. Likewise, the substitution of the letter “s” by the digraph “ph” is the only point of interest of the homophone, “BIOSAPHE”.

Whatever may become of Respondent’s trademark application, filed in the face of Complainant’s registered mark, and whatever view another forum might take of Respondent’s use of the domain name or of a corresponding trademark in respect of similar goods to those sold by Complainant, these are matters beyond the scope of this Policy, concerned as it is with cases of obvious domain name abuse. In this instance the Panel finds that before any notice of the dispute, Respondent used the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods.

Complainant has not established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and so the Panel finds that Complainant has failed to satisfy the second limb of the Policy.

Registration and Use in Bad Faith

No findings required (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

DECISION

Having not established at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <biosaphe.com> domain name REMAIN WITH Respondent.

Debrett G. Lyons, Panelist

Dated: August 24, 2019


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