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Sage Netcom or Sagenet com? #UDRP finds the invisible hyphen in this #domain name

ZFBot

Is there such a thing as an invisible hyphen in a domain name?

In the case of SageNetcom.com, the word split is between the words “Sage” and “Netcom.” The latter stands for “Network & communications.”

The operators of Sage Net, using the domain SageNet.com, filed a UDRP at the National Arbitration Forum, citing a 1999 trademark registration for SAGENET with the USPTO, as the basis of their claim.

Meanwhile, SageNetcom.com was registered in 2015, but its registrant and Respondent in this UDRP claims the name was used for the past 17 years.

Although we are not convinced by the evidence provided by the Respondent, Lars Karnøe, sole panelist, found no proof of bad faith use and registration of the domain SageNetcom.com, and ordered it to remain with the Respondent.

Full details on this decision follow below:

The domain transfer was denied.

SageNet LLC v. Hill, Randy

Claim Number: FA1910001865122

PARTIES

Complainant is SageNet LLC (“Complainant”), represented by Andrew Ruiz de Gamboa, Virginia, USA. Respondent is Hill, Randy (“Respondent”), represented by Jaye G. Heybl of FERGUSON CASE ORR PATERSON, California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sagenetcom.com>, registered with Network Solutions, 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.

Lars Karnøe as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 2, 2019; the Forum received payment on October 2, 2019.

On October 2, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <sagenetcom.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 October 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@sagenetcom.com. Also on October 7, 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.

A timely Response was received and determined to be complete on October 28, 2019.

On October 30, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant claims rights in the SAGENET mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,246,127, registered May 18, 1999) cf. Amended Complaint Exhibit A and this registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).

Complainant next argues Respondent’s <sagenetcom.com> domain name is confusingly similar to the SAGENET mark, but does not make any specific allegations. The Panel, however, notes that the sole differences between the disputed domain name and mark is the addition of the term “com” and a “.com” generic top-level domain (“gTLD”). Regardless, such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).

B. Respondent

Respondent claims that the <sagenetcom.com> domain name is not confusingly similar to Complainant’s SAGENET mark for several reasons: (1) Complainant’s mark does not cover the list of goods and services it alleges; (2) the <sagenetcom.com> domain name is phonetically and visually different to Complainant’s SAGENET mark; and (3) the term “sage” is used by various persons or entities in what Respondent calls “a crowded field” of trademark registrations.

Respondent, finally, contends that given that it has been in business for seventeen (17) years and has used of the domain name for more than three (3) years has built up legitimate rights in the Domain Name.

FINDINGS

Complainant alleges that Respondent registered and uses the <sagenetcom.com> domain name in bad faith as Respondent disrupts Complainant’s business and creates user confusion for commercial gain.

Use of a disputed domain name to offer competing goods or services, which may create user confusion, for commercial gain may indicate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).

However, the Panel notes that the Complainant fails to provide any evidence to support its assertions

As the Respondent contends it has been in business for seventeen (17) years and has used of the domain name for more than three (3) years, Complainant’s unreasonable delay not to contact Respondent before January of 2019 is evidence that its Complaint fails, See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant’s delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).

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

In the analysis of similarity, the marks must be viewed as a whole, however, established case-law stipulates that no emphasis can be attributed to the term “com” and/or a “.com” generic top-level domain (“gTLD”).

The Panel does, however, also note that while the Complainant’s trademark is pronounced “SAGE”-“NET” the disputed domain is likely to be pronounced “SAGE” – “NETCOM” (.COM) and not “SAGENET” – “COM” (.COM).

As per the above, the Panel finds that the analysis of similarity must be made between “SAGENET” and “SAGE NETCOM”

Both marks consist of “SAGE” which, when used as an adjective, means wise, judicious, or prudent, thus making both the first part and second part of both marks somewhat “weak”.

Despite the above, the Panel finds that the maks are visually, phonetically and conceptually similar to a certain degree.

Rights or Legitimate Interests

The Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant fails to allege anything that could be construed under Policy ¶¶ 4(c)(i), (ii) or (iii) apart from its trademark registrations for the SAGENET mark.

Respondent contends that it has legitimate interests in the <sagenetcom.com> domain name as the name reflects its business name, Sage Network & Communications. A respondent may have legitimate interests in a disputed domain name where it reflects as business name and the respondent has provided evidence of this. See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Respondent provides a copy of its business registration with the California Secretary of State which identifies its business as “Sage Network, Inc.” See Resp. Ex. A.

The Panel therefore finds that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Respondent also contends that it uses the <sagenetcom.com> domain name for a bona fide offering of goods and services as it uses the domain name in connection with its business.

The Panel finds that a bona fide offering of goods or services negates a finding that the respondent lacks rights or legitimate interests under Policy ¶ 4(c)(i). See Tech Traders LLC / David Page v. Insuladd Environmental Products, FA 1738720 (Forum Aug. 3, 2017) (finding that respondent had overcome complainant’s contentions under the Policy, because complainant failed to make the required prima facie showing of respondent’s lack of rights and legitimate interests in the disputed domain name)

The Panel therefore finds that Respondent has legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and uses the <sagenetcom.com> domain name in bad faith as Respondent disrupts Complainant’s business and creates user confusion for commercial gain. Use of a disputed domain name to offer competing goods or services, which may create user confusion, for commercial gain may indicate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).

However, Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) as Complainant fails to provide any evidence to support its assertions See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

The foregoing combined with the Respondent having been in business for seventeen (17) years and has used of the domain name for more than three (3) years, leads this Panel to conclude that Complainant’s Complaint has failed.

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 <sagenetcom.com> domain name to REMAIN WITH Respondent.

Lars Karnøe Panelist

Dated: 8 November 8, 2019


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