An Australian entrepreneur and domain investor operating from the domain GoSaas.com faced a UDRP at the Forum (NAF.)
GoSaaS, Inc. claims that it owns the “GOSAAS, INC.” trademark, registered with the USPTO in 2018, and has been operating under this name since 2017. They argue that the Respondent’s use of the gosaas.com domain creates confusion among consumers, leading them to mistake Respondent’s site for the Complainant’s, which has caused loss of revenue and potential employees. The Complainant alleges that the Respondent’s website mimics their own, is unprofessional, and tarnishes their reputation, suggesting that the Respondent’s actions are a bad faith attempt to extort money from the Complainant.
The Respondent asserts that he has operated a legitimate cloud software services business from the gosaas.com domain, which he registered in 2003, long before the Complainant existed. He also engages in buying and selling domain names. Cooke argues that his domain registration predates the Complainant’s trademark and business operations by many years, and thus his registration and use of the domain name cannot be in bad faith. He maintains that his business activities are legitimate and that the domain name has been continuously used for business purposes.
The 3 member panel agreed with the Respondent:
The UDRP panel concluded that although the domain name is confusingly similar to the Complainant’s trademark, the Respondent has legitimate interests and did not register or use the domain name in bad faith, primarily due to the significant time gap between the domain’s registration and the Complainant’s trademark registration and business operations.
Final decision: Deny the transfer of the domain GoSaas.com to the Complainant. Oddly, there was no finding of Reverse Domain Name Hijacking in this case.
The domain transfer was denied.
GoSaaS. Inc v. William Cooke
Claim Number: FA2403002087242
PARTIES
Complainant is GoSaaS. Inc (“Complainant”), represented by Maureen Abbey Scorese, Esq., New Jersey, USA. Respondent is William Cooke (“Respondent”), represented by Daniel Dimov, Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is gosaas.com, registered with NameSilo, LLC.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Neil Brown, KC and Paul DeCicco as Panelists, and Dennis A. Foster as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 6, 2024; Forum received payment on March 6, 2024.
On April 1, 2024, NameSilo, LLC confirmed by e-mail to Forum that the gosaas.com domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 April 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@gosaas.com. Also on April 5, 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 April 23, 2024.
On April 29, 2024, pursuant to the Parties’ request to have the dispute decided by a three-member Panel, Forum appointed Hon. Neil Brown, KC and Paul DeCicco as Panelists, and Dennis A. Foster as Chair.
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.
On May 7, 2024 the Panel issued Procedural Order No. 1 extending the due date for this Decision from May 13, 2024 to May 17, 2024.
On May 16, 2024, the Complainant submitted an Additional Submission for the Panel’s consideration. Having examined the Additional Submission, the Panel has decided not to consider it because it does not contain information that the Complainant could not have submitted earlier or in fact did not already submit earlier (Forum Supplemental Rule 7).
RELIEF SOUGHT
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
–The Complainant had its GOSAAS, INC. service mark registered with the United States Patent and Trademark Office (“USPTO”) on May 8, 2018, Registration Number 5,463,533.
–The service mark name has been used by the Complainant in business since August 1, 2017.
–The Complainant’s domain name was registered on July 17, 2017: gosaas.io.
–The Respondent’s use of the same service mark name in the .com URL has created confusion among consumers in the marketplace.
–The Respondent’s website is a false version of Complainant’s business. This appears to be a tactic by Respondent to cause market damage to Complainant, thus compelling Complainant to pay to Respondent exorbitant, unreasonable fees to regain the marketplace and to stop further business loss of revenue and customer confusion.
–The Respondent’s website is not a legitimate business because it sets forth odd, unrelated and unprofessional statements.
–This actual confusion for customers has resulted in loss of Complainant’s revenue from potential clients and loss of prospective employees.
–The applicable law supports a finding that the Respondent has no rights or legitimate interests in the disputed domain name.
–It is clear that the Respondent has intentionally copied Complainant’s business or its website and purposely created a front for a fake business with the intent to defraud Complainant and to extort tens of thousands of dollars from Complainant.
B. Respondent
–The Respondent runs a cloud software services business from the disputed domain name website.
–The Respondent also sometimes buys and sells domain names from the disputed domain name website.
–The disputed domain name was registered on October 27, 2003, some fourteen years before the Complainant came into existence.
FINDINGS
The Complainant is a USA company that sells cloud-based software as a service (“SaaS”). The Complainant has been doing business since 2017.
The Respondent is an Australian business (and individual) that owns the disputed domain name which was registered in 2003. The Respondent offers SaaS from the website at the disputed domain name as well as the buying and selling of domain names.
In 2021, the Complainant approached the Respondent to try to buy the disputed domain name. These buy/sell contacts have continued up until early 2024 without the Parties being able to reach an agreement.
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
The Complainant has exhibited its GOSAAS, INC. service mark registered with the USPTO on May 8, 2018, Registration Number 5,463,533. The disputed domain name is gosaas.com. The Panel finds that “Inc.”, the common abbreviation for “incorporated”, is a descriptive addition to the more distinctive GoSaaS part of the Complainant’s service mark. The Panel also notes that, under the Policy, the “.com” gTLD (generic Top Level Domain) in the disputed domain name is not to be taken into consideration when determining whether a disputed domain name is identical or confusingly similar to a Complainant’s service mark or trademark. (Yahoo Inc. v. Zanybh Solutions, FA 2022496, Forum December 12, 2022; WIPO Overview 3rd edition (“WIPO 3.0”), section 1.11). Therefore, the Panel finds that the disputed domain name gosaas.com is confusingly similar to the Complainant’s GOSAAS, INC. service mark, and that the Complainant has carried its burden of proof under Policy paragraph 4(a)(i).
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In support of its contention, the Complainant argues that the Respondent is not making a bona fide offering of goods or services at the website of the disputed domain name per Policy paragraph 4(c)(i). Instead, according to the Complainant, the Respondent is making a bad faith offering of services by copying the Complainant’s website and by using off-color communications that reflect poorly on the Complainant among the public who may mistake Respondent’s website for the Complainant’s. The Complainant has exhibited some examples of this alleged Respondent conduct.
The Respondent has come forward to rebut the Complainant’s contention and has marshalled exhibits showing that the Respondent has been and is still operating a business from the disputed domain name website to which the domain name resolves. The Panel finds that although the Respondent’s websites may not be as polished as the Complainant’s, they do offer SaaS services and the odd domain name for sale. In addition, the Respondent has shown that it has had an Australian business registration and a business at the disputed domain name for years before the Complainant existed.
In review of the competing contentions of the two Parties, the Panel finds that the Respondent has shown that it does have legitimate rights and interests in the disputed domain name in view of the business services it has offered at the website to which its domain name resolves. (See Metso Corporation v. Rodney Olsen, FA2309002060371, Forum October 2, 2023; and Country Mutual Insurance Company and Country Life Insurance Company v. Company Office/Company, FA2308002057978, Forum October 2, 2023).
As a result, the Panel finds that the Complainant has failed to carry its burden of proof under Policy paragraph 4(a)(ii).
Registration and Use in Bad Faith
The Complainant contends that the disputed domain name was registered and is being used in bad faith because the Respondent is using the website at the disputed domain name to copy the Complainant’s website and to post communications that reflect poorly on the Complainant’s business in order to get an unfairly high price for the disputed domain name from the Complainant.
As stated supra, the Respondent has come forward and made credible claims that it does offer software services at the disputed domain name. In addition, the disputed domain name was registered in 2003 and has been in the hands of the Respondent and Respondent’s business associates since that time. The Complainant began doing business only in 2017, and thus the Respondent could not have registered the disputed domain name in bad faith vis-à-vis this Complainant.
Likewise, the evidence is that the Complainant’s service mark was registered on May 8, 2018, which was almost 15 years after the Respondent registered its domain name on October 27, 2003. See WIPO 3.0, section 3.8.1: “Normally speaking, when a domain name is registered before a trademark is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the Complainant’s non-existent right.”; and see John E. ODE dba and ODE-Optimum Digital Enterprises v. Intership Limited, WIPO D2001-0074; and Sony Pictures Television Inc. v. Thomas, Jeff, FA1506001625643 (Forum August 6, 2015). Accordingly, the Respondent could not have been motivated by bad faith either in the registration or use of the domain name.
Therefore, the Panel finds that the Complainant has not carried its burden of proof to show that the Respondent registered and is using the disputed domain name in bad faith per Policy paragraph 4(a)(iii).
DECISION
Having established the first but not the second and third elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the gosaas.com domain name REMAIN WITH Respondent.
Hon. Neil Brown, KC and Paul DeCicco, Panelists, and Dennis A. Foster, Chair
Dated: May 17, 2024
