The operators of SambaTV.com registered the domain name in 2000. Samba TV, a US-based television technology company operates from the “domain hack” Samba.tv.
They filed a UDRP to grab the domain but it didn’t end well. Not only was the dispute rejected, the Forum (NAF) panelist delivered a finding of Reverse Domain Name Hijacking, as the Complainant’s mark was registered a decade plus after the domain’s registration:
Bearing in mind the plain words of the Policy, the Panel finds it unlikely that the Complaint is to the best of Complainant’s knowledge complete and finds it incomprehensible that it could certify in good faith that the assertions in the Complaint are warranted. The Panel finds reverse domain name hijacking.
Final decision: Deny transfer of the domain SambaTV.com and a finding of Reverse Domain Name Hijacking (RDNH.)
DECISION – SAMBA TV, INC. v. osamu kobayashi
Claim Number: FA2208002010470
PARTIES
Complainant is SAMBA TV, INC. (“Complainant”), represented by Neil A. Salyards of Procopio, Cory, Hargreaves and Savitch LLP, California, USA. Respondent is osamu kobayashi (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is sambatv.com, registered with eNom, 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 Forum electronically on August 31, 2022; Forum received payment on August 31, 2022.
On August 31, 2022, eNom, LLC confirmed by e-mail to Forum that the sambatv.com domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 September 1, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@sambatv.com. Also on September 1, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On September 30, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist (the “Panel”).
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 SAMBA and SAMBA TV and submits that the domain name is confusingly similar to its trademarks.
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 is a US-based television technology company, principally doing business under the name, SAMBA TV; and
2. the disputed domain name was created on January 10, 2000;
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 to prove each of the following elements to obtain an order that the domain name be 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
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.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant asserts “trademark rights in the SAMBA and SAMBA TV Marks, based on its trademark registrations…”. The Complaint states that “Samba TV, Inc. owns the following worldwide trademark registrations for the SAMBA and SAMBA TV marks” and lists, amongst others, two registrations with the United States Patent & Trademark Office (“USPTO”) – one for SAMBA, the other for SAMBA TV.
The USPTO registration certificates are annexed to the Complaint. The certificates show the owner as Free Stream Media Corp.. There is no explanation of the relationship, if any, between Complainant and Free Stream Media Corp.. There are references to international registrations for SAMBA and SAMBA TV but no proof of those registrations, still less of their proprietorship.
Another UDRP panel may have denied the Complainant at this point for failure to establish trademark rights.
Nonetheless, for the purposes of the discussion which follows, the Panel takes further note of USPTO Reg. No. 4,712,857 (“the Earliest Registration”)[i] for the mark, SAMBA TV (“the Trademark”). The Panel has referred to the “TESS” trademark search facility of the USPTO and observes for itself that the Earliest Registration has been recorded as assigned to Complainant.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Since the USPTO is a national trademark authority, the Panel finds that Complainant has trademark rights in SAMBA TV.
The balance of UDRP authority is that a domain name which comprises a trademark and a gTLD, such as “.com” in this case, is considered to be legally identical to that trademark[iii]. Following that authority the Panel finds the disputed domain name identical to the Trademark and so finds that the first element of the Policy is satisfied.
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 non-commercial 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service provider, but in consequence of these proceedings the Registrar disclosed the name of the actual registrant as “osamu kobayashi”. That name does not provide any indication that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Accordingly, there is no suggestion that paragraph 4(c)(ii) of the Policy might apply.
However, even in the absence of a Response, there are circumstances which clearly point towards Respondent having a legitimate interest in the domain name by way of either paragraph 4(c)(i) or (iii) above. In particular, the disputed domain name was created on January 10, 2000. Complainant’s own evidence shows use of the domain name from February 2004 onwards. The use is, at best, sporadic, but nevertheless linked to the descriptive nature of the domain name – ie – “samba” (the dance of Brazilian origin) and “tv” (the ubiquitous abbreviation of “television”). So, for example, the evidence shows the first appearance of a rudimentary webpage in 2004 with the heading “Sambaradio” and, in Japanese, “Happy New Year”. Screen captures a short time later state, in Japanese, “Operation started!” and show links entitled, in Japanese, “new release” and “hit chart”.
By contrast, the application for the Earliest Registration was filed on September 13, 2012 and the Trademark registered on March 31, 2015. The Earliest Registration claims a first use in commerce of the Trademark of August 1, 2011.
Complainant asserts “common-law rights established through the use of … SAMBA TV … dat[ing] back to at least as early as August 01, 2011.” That date is, of course, the first use date listed in the Earliest Registration. It is not, of itself, proof of reputation or common law rights.
The evidence accompanying the Complaint shows that Complainant’s online business is located at www.samba.tv and that the samba.tv domain name was created on March 23, 2010. It makes the statement that Complainant “has advertised and offered its goods and services online at that website continuously ever since.”
Annexure 4 to the Complaint is said to show “historical screenshots for samba.tv”. It shows use commencing in October 2013. There is nothing to suggest that use after 2013 was interrupted but, equally, nothing of the kind normally adduced to prove reputation and common law rights[v].
Were the relevant issue whether Complainant had established common law rights in the Trademark, the Panel would be inclined to answer in the negative.
However, the point for the purposes of paragraph 4(a)(ii) of the Policy is that, on the evidence, Complainant has shown rights in the Trademark no earlier than September 2012 (the priority date of the Earliest Registration), more than 12 years after the disputed domain name was created, and 8 years after it was first used. Any suggestion, then, that the domain name was registered to take advantage of Complainant business or reputation is fantasy.
In terms of paragraph 4(a)(ii) of the Policy, the evidence is indicative of either, preparations to use the domain name in connection with a bona fide offering of goods or services, or alternatively, legitimate non-commercial of the domain name without any intention to divert consumers. Importantly, there is no evidence of bad faith. Respondent has not approached Complainant and has not made any use of the domain name which could be construed as taking advantage of whatever goodwill resides in the Trademark now.
In so far as Complainant relies on earlier UDRP decisions which have considered lack of substantial commercial use to negate rights or legitimate interest, those cases have almost invariably dealt with circumstances where it could reasonably be inferred that the respondent was aware of the complainant’s business and trademark. Clearly, that is not the case here.
The Panel finds that Complainant has failed to make a prima facie case that Respondent has no rights or interests and so finds that Complainant has not established the second limb of the Policy.
Registration and Use in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
From what has been written already, it is plain that proof of registration in bad faith is the critical obstacle to the Complaint.[vi] Nonetheless, Complainant alleges that “Respondent’s primary intent in registering and maintaining the Domain Name was, and is, to sell it for a price in excess of out-of-pocket expenses related to the Domain Name”[vii].
For reasons discussed, the assertion that Respondent’s intention at the time of registration was to sell the domain name for a price in excess of its out-of-pocket expenses is unsupported by the evidence and is unable to be reasonably inferred.
The assertion that Respondent maintained and renewed the registration with that intention is a separate matter, but not one related to the Policy which only contemplates Respondent’s state of mind at the time of registration, not renewal[viii].
The claim of registration in bad faith therefore fails, with the result that Complainant has not established the third and final element of the Policy.
REVERSE DOMAIN NAME HIJACKING
Complainant certifies that “the information contained in this Complaint is to the best of Complaint’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
Complainant is professionally represented. By its own evidence, Respondent adopted the disputed domain name before it could have known of Complainant’s business. Moreover, the limited use of the domain name by Respondent, many years before Complainant’s asserted first use in commerce of the Trademark, is use related to the ordinary, dictionary, meaning of the terms comprising the Trademark.
There is no evidence of bad faith. There is no evidence that Respondent has approached Complainant (or another) to sell the domain name, nor asked for money or other favour in response to entreaties by Complainant to transfer the disputed domain name. Nor has Respondent at any time after the commencement of Complainant’s business under the Trademark, adapted the resolving page to offer or promote goods or services of the kind of interest to Complainant.
On one reading of the evidence, the domain name is one coveted by Complainant as an obvious choice for its later established business and, unwilling to negotiate a commercial agreement for its acquisition, Complainant has brought these proceedings based on what the Panel finds to be unsustainable assertions.
Bearing in mind the plain words of the Policy, the Panel finds it unlikely that the Complaint is to the best of Complainant’s knowledge complete and finds it incomprehensible that it could certify in good faith that the assertions in the Complaint are warranted. The Panel finds reverse domain name hijacking.
DECISION
Having failed to establish at least one of the elements required under the ICANN Policy in respect of the domain name, the Panel concludes that relief shall be DENIED. It is Ordered that the sambatv.com domain name REMAIN WITH Respondent.
The Panel also finds reverse domain name hijacking.
Debrett G. Lyons, Panelist
Date: October 12, 2022
[i] None other of Complainant’s listed registrations shows an earlier priority date.
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), #1.11.
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, WIPO Jurisprudential Overview 3.0, #1.3.
[vi] See, for example, Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
[vii] adopting the wording of para. 4(b)(i) of the Policy:
circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
[viii] See, WIPO Jurisprudential Overview 3.0, #3.9.
