UDRP has been denied.
Merry Christmas!
Grinch of the year award goes to Service Spring Corp. of Maumee, Ohio, that attempted to take SSC.com from its owners via the UDRP process.
We are talking about a domain name registered in freaking 1989 – almost thirty years ago!
Its Chinese registrant defended the domain, using the services of YesLaw, China.
The Complainant asserted trademark rights going back to 1973, all while asserting that the current registrant of SSC.com goes back to 2013 only.
The Respondent stated that a three letter acronym cannot be used exclusively in a trademark, and that the Complainant has no such marks in China.
In 2013, SSC.com was sold for $50,299 dollars in a NameJet auction, according to NameBio.
Warwick A. Rothnie, sole panelist at the WIPO, found no bad faith in use or registration of SSC.com and denied its transfer.
Full details of this decision follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Service Spring Corp. v. hao wang
Case No. D2018-24221. The Parties
The Complainant is Service Spring Corp. of Maumee, Ohio, United States of America (“United States”), represented by SCHAFFER, SCHAUB & MARRIOTT, LTD.
The Respondent is hao wang of Shenzen, China, represented by YesLaw, China.
2. The Domain Name and Registrar
The disputed domain name <ssc.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2018. On October 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. On November 21, 2018, the Respondent requested an eight-day extension of the due date for Response. On November 22, 2018, the Complainant objected to the Respondent’s request. On the same day, the Center granted an automatic four-day extension of the deadline to file the Response, and a further two-day extension of the deadline, such that the new deadline for the Response was November 28, 2018. The Response was filed with the Center on November 27, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 4, 2018. The Panel finds that it was properly constituted. 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 Complainant is based in the United States. In the United States, it has registered Trademark No. 3,770,569, SSC & device, for a wide range of goods in International Class 6. The goods may be broadly classified as springs, hooks, cables, brackets, cable drums, clips, fasteners, chains and latches. The application to register this trademark was filed on August 4, 2009. It was registered in the Principal Register on April 6, 2010. The device consists of six black, horizontal bars over the letters “SSC” which are in red. The colours are expressly claimed as part of the trademark.
According to the trademark registration, and the Complaint, the Complainant first used the trademark in commerce in the United States on February 1, 1973.
The disputed domain name was first registered on July 15, 1989. Although it appears to be contentious between the parties, the Panel finds (for reasons which will be discussed below) that the Respondent did not register it at that time, but rather became the registrant of the disputed domain name in 2013.
The disputed domain name does not resolve to an active website. It appears that it has not resolved to an active website since about October 31, 2013. For a short period in October 2013, the disputed domain name resolved to an online casino. At least in September 2013, the disputed domain name resolved to a website which appears to have been offering for sale a large number of domain names, including the disputed domain name.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of United States Registered Trademark No. 3,770,569, for SSC and device.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.In the present case, the verbal element of the Complainant’s trademark is a prominent and distinctive element of the registered trademark. The three letters are a natural verbal reference for the trademark. They are a significant distinctive element of the trademark and cannot be described as a minor or subsidiary feature to the pictorial elements. See WIPO Overview 3.0, section 1.10.
The disputed domain name differs from the verbal component of the Complainant’s trademark only by the addition of the gTLD “.com”. In these circumstances, the disputed domain name is confusingly similar to the Complainant’s proven trademark.
Consistently with the approach outlined in WIPO Overview 3.0, section 1.7, the arguments of the Respondent based on the Complainant’s alleged lack of rights in China or reputation in its trademark fall for consideration more appropriately under other elements of the Policy.
Accordingly, the Panel finds the Complainant has established that the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainant contends that the Respondent first registered the disputed domain name in late 2013 and that the disputed domain name has not resolved to an active website since the Respondent became the registrant.
These matters taken together are typically sufficient to raise at least the necessary prima facie case.
The Respondent first points to the registration of the disputed domain name in 1989, long before the Complainant registered its trademark in the United States in 2010.
Generally speaking, rights or legitimate interests are assessed at the date of the Complaint: WIPO Overview 3.0, section 2.11. In any event, as discussed below, Annex 5 to the Response shows that the Respondent did not become the registrant of the disputed domain name until March 2013 at the earliest.
The Respondent’s further arguments focus on the nature of the disputed domain name as a three letter acronym and the Respondent’s claim that the Complainant’s trademarks do not extend to China. As the Complainant points out, the latter point is not necessarily conclusive.
Insofar as this limb of the Policy is concerned, the central issue is that the Respondent does not use the disputed domain name for anything.
In these circumstances, the question of rights or legitimate interests will turn on questions of bad faith, which are best considered in section 5C below in relation to the third element under the Policy. As the panelist in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 explained:
“[…] the determination of legitimacy in this case largely hinges on the question of bad faith, which is better addressed below in connection with the third element of the Policy. If the Respondent registered and used the Domain Name, and offered it for sale, in good faith, then we must conclude that the Respondent had a legitimate interest in the Domain Name as it does in hundreds of thousands of other domain names in its portfolio. On the other hand, if the Respondent failed to act in good faith, by registering and using a non-generic domain name that it should have realized was likely to correspond to a trademark, then the Respondent has no legitimate interest in this particular Domain Name.”
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant submits that bad faith should be inferred from (i) the Respondent’s use of a privacy service, (ii) the Respondent’s provision of incomplete address details in the WhoIs record and (iii) the Respondent’s failure to respond to the Complainant’s cease and desist letters.
Each of these matters are factors which can contribute to a finding of registration and use in bad faith. See e.g., WIPO Overview 3.0, section 3.6 in relation to the use of privacy or proxy services. The inadequate address details in the WhoIs record are particularly concerning. Whether the presence of these factors does lead to a finding of bad faith, however, depends on all the circumstances of the case.
In the present case, the Respondent’s reliance on registration of the disputed domain name in 1989 before the Complainant registered its trademark in the United States in 2010 is entirely misplaced. This is because (at least) the relevant time for consideration is when the Respondent registered the disputed domain name.
As noted above, Annex 5 to the Response shows that the Respondent did not become the registrant of the disputed domain name until March 2013 at the earliest. Prior to that, the Domain Tools report submitted by the Complainant shows that the disputed domain name was held between 2003 and 2013 by various third parties. By the time the Respondent registered the disputed domain name, therefore, the Complainant’s trademark had been registered in the United States.
The Panel notes that the Domain Tools report submitted by the Complainant indicates that the Respondent is the owner of some 4,800 other domain names. The nature of those domain names, however, is not disclosed.
The Respondent denies knowledge of or an intent to trade on the Complainant’s trademark. There is no evidence that the disputed domain name has resolved to a website in any way related to the Complainant’s field of activity.
The Respondent contends that, whatever may be the case in the United States, the Complainant does not have trademark rights in China. Indeed, the Respondent has submitted a trademark search showing that there are over 325 trademarks registered in China for “SSC” or signs which incorporate “SSC” with additional elements. At least 10 of these trademarks are registered in International Class 6. The Complainant has not disputed the Respondent’s claim that none of these trademarks belongs to the Complainant. These facts are not necessarily decisive if the Respondent were otherwise shown to be seeking to take advantage of the Complainant’s trademark.
The Complainant has stated that its trademark has been in use since 1973. Apart from that indication, the Complaint does not provide any evidence about how extensively the trademark has been used. Nor does the Complaint suggest that the Complainant has been using its trademark in China at all. Sofar as the record in this case goes, these are matters of speculation.
On the other hand, the Respondent has submitted evidence to show that neither the Complainant nor the Complainant’s trademark are disclosed by a search on “Baidu.com”. According to the Respondent, “Baidu.com” is the most popular search engine in China, where “Google.com” is blocked. The Panel notes for what it is worth in the circumstances that a search of “SSC” on “Google.com” in the Panel’s location does not disclose a listing for the Complainant on at least the first three results pages.
Further, the disputed domain name consists of three letters. Those letters can be an acronym of many different entities and things. Wikipedia for example lists Seoul Semiconductor Company, Shanghai Supercomputer Center, Shard Services Center, SSC North America (an automobile manufacturer rather than the Complainant), Specialized Systems Consultants, Swedish Space Corporation, Southern Star Central Gas Pipeline, numerous educational institutions and many other terms in the fields of technology, life sciences, physical sciences, computing and sports, amongst many others.
The present case, therefore, is very different to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. That case involved, amongst other things, a coined term, a trademark which was extremely well-known throughout Australia where the respondent claimed to be located and for which the learned panel unequivocally held that “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <telstra.org>.”
Taking all these matters into account, the Panel finds that the Complainant has not proved the Respondent registered or used the disputed domain name in bad faith.
6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: December 17, 2018
