RockSolar.com: Domainer rocks UDRP filed on aged solar domain

The domain RockSolar.com was registered in 2006; in 2017, RockSolar Technology LLC allegedly acquired a trademark registration for ROCKSOLAR.

The company filed a UDRP to usurp the domain from the domain investor who hand-registered it 16 years ago, well before Complainant received any rights to its mark.

Additionally, the filing revealed that the Complainant has in fact reassigned the mark to a new owner:

However, according to the USPTO online database, the owner of the ROCKSOLAR trademark is not the Complainant, but a Chinese company by the name of Shenzhen Sbase Electronics Technology Co., Ltd. The Complainant is mentioned as the “LAST LISTED OWNER” and, thanks to Annex 1 of the Response, the Panel has realized that there had been an assignment from the Complainant to the benefit of the above Chinese company in January 2022. This is valid for both US trademarks on which Complainant has based its complaint.

Final decision: Deny transfer of the domain RockSolar.com to the Complainant. The Respondent was represented by “super” attorney Daliah Saper, of Saper Law.

The domain transfer was denied.

ROCKSOLAR TECHNOLOGY LLC v. RTH Domains

Claim Number: FA2210002015315

PARTIES

Complainant is ROCKSOLAR TECHNOLOGY LLC (“Complainant”), US. Respondent is RTH Domains (“Respondent”), represented by Daliah Saper, US.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is rocksolar.com, registered with 1API GmbH.

PANEL

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

Sozos-Christos Theodoulou as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 10, 2022; Forum received payment on October 10, 2022.

On October 11, 2022, 1API GmbH confirmed by e-mail to Forum that the rocksolar.com domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 October 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2022 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@rocksolar.com. Also on October 18, 2022, 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 November 7, 2022.

On November 11, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Sozos-Christos Theodoulou 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 is ROCKSOLAR TECHNOLOGY LLC. Complainant asserts rights in the ROCKSOLAR mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,190,978, registered April 25, 2017). See Compl. Annex 2. Respondent’s rocksolar.com domain name is identical or confusingly similar to Complainant’s mark because it contains the ROCKSOLAR mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.

Respondent does not have rights or legitimate interests in the rocksolar.com domain name. Respondent is not licensed or authorized to use Complainant’s ROCKSOLAR mark and is not commonly known by the disputed domain name.

Respondent registered and uses the rocksolar.com domain name in bad faith because Respondent has offered to sell the disputed domain name in excess of its out-of-pocket costs.

B. Respondent

Respondent is RTH Domains. Respondent registered the rocksolar.com domain name on April 13, 2007. See Resp. Pg. 4.

Respondent has rights or legitimate interests in the rocksolar.com domain name. Respondent registered the disputed domain name well before Complainant received any rights in its mark.

Respondent did not register or use the rocksolar.com domain name in bad faith. Respondent has proven it has rights or legitimate interests in the disputed domain name and Complainant has failed to provide evidence to the contrary. Additionally, Complainant initiated purchasing the disputed domain name.

FINDINGS

The Complaint/Amended Complaint has not been filed in a way that would enable the Panel to learn sufficient facts for deciding on this case. The Panel has, thus, attempted to make its own research on the internet, so as to at least apprehend the basic elements of the dispute.

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.

Identical and/or Confusingly Similar

Complainant asserts rights in the ROCKSOLAR mark based upon registration with the USPTO (e.g., Reg. No. 5,190,978, registered April 25, 2017). See Compl. Annex 2. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).

Further, Complainant contends that Respondent’s rocksolar.com domain name is identical or confusingly similar to Complainant’s ROCKSOLAR mark. The addition of a gTLD to a mark does not distinguish the disputed domain name from the mark incorporated therein, and is usually considered irrelevant per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the shamu.org domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). The disputed domain name incorporates the ROCKSOLAR mark in its entirety, merely adding the gTLD “.com”. Therefore, the Panel could normally find that the disputed domain name is identical or confusingly similar to the ROCKSOLAR mark under Policy ¶ 4(a)(i).

However, according to the USPTO online database, the owner of the ROCKSOLAR trademark is not the Complainant, but a Chinese company by the name of Shenzhen Sbase Electronics Technology Co., Ltd. The Complainant is mentioned as the “LAST LISTED OWNER” and, thanks to Annex 1 of the Response, the Panel has realized that there had been an assignment from the Complainant to the benefit of the above Chinese company in January 2022. This is valid for both US trademarks on which Complainant has based its complaint.

Further to this finding, the Panel has nevertheless tried to check online whether there is any legal affiliation between the two companies, which could justify the fact that the Complainant had filed the present Complaint, despite not having trademark rights on the ROCKSOLAR trademark at the time of filing of the Complaint. No such indication has been found on Complainant’s official website rocksolars.com. From other online sources, related to Customs activity, it seems that the Complainant (buyer) has occasionally imported goods from the Chinese company (supplier), but no other legal relationship between these companies has been traced.

Therefore, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), because it has failed to establish rights in the ROCKSOLAR trademark.

Rights or Legitimate Interests

As Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze this second element of the Policy.

Registration and Use in Bad Faith

As Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze this third element of the Policy.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the rocksolar.com domain name REMAIN WITH Respondent.

Sozos-Christos Theodoulou, Panelist

Dated: November 19, 2022

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