#Soothamide .com : Bizarre #UDRP decision regarding registered #trademark

WTF Seriously?

Vitalitus LLC filed a UDRP against the domain Soothamide.com, which is being held by a Turkish registrant.

The Complainant is using the term SOOTHAMIDE for cosmetic goods in the US, and filed for a trademark on September 3, 2016. The application was originally “intent to use” and the mark’s registration was completed on November 21, 2017.

Interestingly, the domain Soothamide.com was registered 3 days after the initial trademark was applied for, indicating the Respondent had some inside information. They did not respond to this UDRP proceeding, however, and are offering to sell the domain for $950 dollars.

The sole panelist at the National Arbitration Forum indicated that the Complainant lacked a registered trademark at the time of the UDRP filing, stating that the UDRP was based on a “common law” trademark.

That is inaccurate, however, as the trademark for SOOTHAMIDE was already registered when the UDRP was filed, November 30th, 2017.

The panelist’s decision was to allow the domain Soothamide.com remain with the Respondent. We believe that the language of the filing wasn’t updated prior to its submission, pointing to a potential error made by the Complainant due to not updating their document.

For the full details of this case, see below.

Vitalitus LLC v. Cenk Erdogan / This domain name is for sale

Claim Number: FA1711001760679

PARTIES

Complainant is Vitalitus LLC (“Complainant”), represented by Eddy Cardentey, Pennsylvania. Respondent is Cenk Erdogan / This domain name is for sale (“Respondent”), Turkey.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <soothamide.com>, registered with NameSilo, LLC.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 30, 2017; the Forum received payment on November 30, 2017.

On December 1, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <soothamide.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2017 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@soothamide.com. Also on December 5, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.

On December 29, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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

1. Complainant actively uses its SOOTHAMIDE mark in commerce for a variety of cosmetic goods. Complainant owns common law rights in the mark, and has filed an application with the United States Patent and Trademark Office (“USPTO”) (Serial No. 87,160,715, Filed Sep. 3, 2016). See Compl. Annex. Respondent’s <soothamide.com> domain name is essentially identical to Complainant’s trademark since SOOTHAMIDE is incorporated entirely.

2. Respondent has no rights or legitimate interests in the <soothamide.com> domain name. Respondent has no authorization, permission, or license from Complainant to use the SOOTHAMIDE mark. Further, the disputed domain name resolves to a blue screen only displaying the message “soothamide.com is for sale! Buy now for $950…Sold securely via NameSilo.” See Compl. Annex. Moreover, previous UDRP panels have ruled against Respondent in similar circumstances, which suggests that Respondent is a cybersquatter. See Compl. pg. 4.

3. Respondent registered and uses the <soothamide.com> domain name in bad faith. Complainant filed its trademark with the USPTO on September 3, 2016, then five days later, on September 7, 2016, Respondent registered the disputed domain name for the purpose of cybersquatting. Further, Respondent does not market any product or service at the disputed domain name, as the resolving website only displays the message “soothamide.com is for sale! Buy now for $950…Sold securely via NameSilo.” See Compl. Annex. Moreover, previous UDRP panels have ruled against Respondent in similar circumstances, which suggests that Respondent is acting in bad faith. See Compl. pg. 4.

B. Respondent

1. Respondent did not submit a response.

FINDINGS

Complainant has failed to satisfy Policy ¶ 4(a)(i).

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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Identical and/or Confusingly Similar

Complainant claims it holds common law rights in the SOOTHAMIDE mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant does not provide any evidence of having acquired a secondary meaning in the SOOTHAMIDE mark. Complainant relies on its having filed a trademark application with the USPTO (Serial No. 87,160,715, Filed Sep. 3, 2016). See Compl. Annex. However, trademark applications alone are generally insufficient to demonstrate rights in a mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). Hence, the Panel finds Complainant’s USPTO application alone does not confer common law rights in the SOOTHAMIDE mark purposes of Policy ¶ 4(a)(i). Thus, the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), and accordingly thus declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugh Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, without prejudice to file an Amended Complaint.

John J. Upchurch, Panelist

Dated: January 12, 2018

 


Facebooktwittergoogle_plusredditpinterestlinkedinmail
Copyright © 2018 DomainGang.com · All Rights Reserved.

Comments

One Response to “#Soothamide .com : Bizarre #UDRP decision regarding registered #trademark”
  1. VM Freeman says:

    I love looking back at these bizarre scenarios, whereby it could all have been avoided for a meagre $950 – obviously the complainant spent more than $950 on the UDRP and made some lawyers richer, and as the icing on the cake, the domain price subsequently went up $2795. The lesson learned here, is not to allow emotions (goaded on by “let’s get ’em” lawyers looking for a fee) to take precedence over business sense.

    Penny smart, pound stupid. Just pay the $950 and move on.

    VM Freeman
    DomainRecap.com

Leave a Reply

Your email address will not be published. Required fields are marked *

 characters available