A company called Scoop Soldiers Service Company provides pet waste removal services; operating from the domain ScoopSoldiers.com, they registered the mark SCOOP SOLDIERS in 2019.
Meanwhile, the operators of the domain ScoopSoldier.com display similar content; that domain was registered in 2022. That domain forwards to a business called Poopy Doo, operating from PoopyDoo.com. 🙂
In the ensuing UDRP, the Respondent stated that the domain ScoopSoldier.com was recommended to register by GoDaddy, so they did in good faith.
The sole panelist at the Forum (NAF) agreed:
“The Response strongly suggests that Respondent was genuinely surprised by the Complaint and had no idea there was another Scoop Soldier out there. Respondent’s assertion that the domain name was a GoDaddy recommendation does not amount to a denial of knowledge of Complainant or its mark or domain name at the time of registration. However, the descriptive nature of the domain name and the difference between “soldiers” and “soldier” are consistent with an innocent intention even if Respondent had been aware of Complainant at the time of registration and when the domain name resolved to Respondent’s website.”
Final decision: Deny the transfer of the domain ScoopSoldier.com to the Complainant.
The domain transfer was denied.
Scoop Soldiers Service Company, LLC v. Carl Gregory
Claim Number: FA2307002053790
PARTIES
Complainant is Scoop Soldiers Service Company, LLC (“Complainant”), represented by Christopher R. Castro, Texas, USA. Respondent is Carl Gregory (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is scoopsoldier.com, registered with GoDaddy.com, 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.
David S. Safran, Charles A. Kuechenmeister and Alan L. Limbury (Chair), as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 19, 2023. Forum received payment on July 19, 2023.
On July 19, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the scoopsoldier.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2023 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@scoopsoldier.com. Also on July 21, 2023, 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.
On August 10, 2023, Respondent officially requested an extension of time to respond and a timely Response was received and determined to be complete on August 11, 2023.
On August 25, 2023, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed David S. Safran, Charles A. Kuechenmeister and Alan L. Limbury (Chair) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In 2019, Complainant, Scoop Soldiers Service Company, LLC, registered with the United States Patent and Trademark Office (“USPTO”) the service mark SCOOP SOLDIERS, for pet waste removal services and Complainant began using the domain name scoopsoldiers.com. Beginning in 2022, Respondent began using the domain name scoopsoldier.com. The only difference between the domain names is that Respondent uses the singular.
Complainant has conducted business under the SCOOP SOLDIERS mark in Arizona since 2020. Respondent registered the scoopsoldier.com domain name in 2022. It resolves to the website “www.poopydoo.com”. Respondent does not have a legitimate business interest in the domain name as it is being used to confuse the public into believing that “www.poopydoo.com” is the same website and company as Complainant’s website at “www.scoopsoldiers.com”.
Respondent does not conduct business under the name Scoop Soldier and has not registered the name Scoop Soldier with the Arizona Secretary of State (either as a corporation or a trade name). The domain name scoopsoldier.com is being used to confuse the public into believing that “www.poopydoo.com” is the same as the website for Complainant at “www.scoopsoldiers.com”.
B. Respondent
PoopyDoo.com is a local small family business established in 2005. The scoopsoldier.com domain name was a GoDaddy recommendation. Respondent didn’t even know it was going to Respondent’s homepage as it was nothing more than an oversight. In summation, Complainant has not only failed to meet all Requirements, but more importantly, has failed to produce any proof whatsoever.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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.
The Panel finds as follows with respect to the matters at issue in this proceeding.
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the SCOOP SOLDIERS service mark through registration with the USPTO (Reg. No. 5,905,187, registered on November 5, 2019). The Panel finds Respondent’s scoopsoldier.com domain name to be confusingly similar to Complainant’s mark, only differing by the absence of the letter “s”, which does nothing to distinguish the domain name from the mark. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel’s finding under the next element, it is unnecessary to consider this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The concept of bad faith as illustrated in the four scenarios listed in Policy ¶ 4(b) necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. Such subjective intent in turn requires the Panel to be persuaded, on the balance of probability, that Respondent actually knew of Complainant and its rights in the relevant mark when the domain name was registered.
In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including use of a domain name in direct competition with a trademark owner; simple impersonation of some sort; the parties operating in the same market segment; the parties being physically located in the same general geographic area; a pattern of bad faith conduct; actual prior association between or among the parties; the fanciful nature of a trademark suggesting that any similarity is not happenstance; or the famous nature of the trademark, again suggesting that any similarity is not happenstance. Importantly, mere allegations about a respondent’s subjective intention are not evidence in this regard.
Respondent in this case says he had no knowledge of Complainant or its mark when he registered the domain name and that he selected it on the recommendation of the registrar, GoDaddy. It is true that Respondent is operating in the same industry as Complainant but there is no evidence before the Panel to support Complainant’s assertion that it has been doing business since 2020 under the SCOOP SOLDIERS mark in Arizona, which is separated by an entire state (New Mexico) and much of Texas itself from Complainant’s home base near Dallas, Texas.
More importantly, both Complainant’s mark and the domain name are descriptive in nature, describing the business in which both parties operate. This constitutes a plausible basis for Respondent to have selected the domain name on its own merits, despite the domain name being registered 3 years after Complainant’s mark and domain name were registered and resolving to Respondent’s “www.poopydoo.com” website. There is no impersonation, no pattern of bad faith conduct, no evidence that Complainant is famous, or even well-known in Arizona.
The Response strongly suggests that Respondent was genuinely surprised by the Complaint and had no idea there was another Scoop Soldier out there. Respondent’s assertion that the domain name was a GoDaddy recommendation does not amount to a denial of knowledge of Complainant or its mark or domain name at the time of registration. However, the descriptive nature of the domain name and the difference between “soldiers” and “soldier” are consistent with an innocent intention even if Respondent had been aware of Complainant at the time of registration and when the domain name resolved to Respondent’s website.
Accordingly, the Panel considers there is no evidence upon which to find that Respondent registered the domain name in bad faith to target Complainant. Further, the descriptive nature of the domain name is such that Respondent’s use of it to resolve to his “www.poopydoo.com” website has not been shown to be bad faith use.
The Panel finds that Complainant has failed to demonstrate bad faith registration and use.
DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the scoopsoldier.com domain name REMAIN WITH Respondent.
David S. Safran, Charles A. Kuechenmeister and Alan L. Limbury (Chair), Panelists
Dated: August 29, 2023
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