UDRP has been denied.
SuperTurbo Technologies, Inc., filed a UDRP against the aged domain SuperTurbo.com.
Its registrant, Mike Hare, offers sports photography services, and did not respond to the UDRP.
Registered in 2000, SuperTurbo.com became the object of desire for the Complainant in this UDRP, as they possess a trademark, registered in 2013.
The Complainant uses SuperTurbo.net, a domain registered in 2010; it seems that they acquired that domain in the secondary market in early 2017.
The sole panelist, Debrett G. Lyons, pointed out the 13 year old gap between the domain’s registration date and that of the trademark, and ordered the domain to remain with the Respondent.
For the full text of the UDRP decision for SuperTurbo.com, see below.
SUPERTURBO TECHNOLOGIES INC. v. Hare, Mike
Claim Number: FA1710001756491
PARTIESComplainant is SUPERTURBO TECHNOLOGIES INC. (“Complainant”), represented by William P. O’Meara of Cochran Freund & Young, LLC., Colorado, USA. Respondent is Hare, Mike (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <superturbo.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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on October 31, 2017; the Forum received payment on October 31, 2017.
On November 1, 2017, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the Forum that the <superturbo.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 November 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@superturbo.com. Also on November 7, 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 November 29, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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
Complainant asserts trademark rights in SUPERTURBO and alleges that the disputed domain name is identical to its trademark.
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 sells gas compressors by reference to the trademark SUPERTURBO;
2. the trademark SUPERTURBO is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 4,339,204, registered May 21, 2013; and
3. the disputed domain name was created on January 18, 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 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.
Trademark Rights / Identical 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.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for SUPERTURBO, the Panel is satisfied that it has trademark rights in that term.[i]
The disputed domain name merely adds the general top-level domain, “.com”, to the trademark. UDRP panels have consistently held an additions of this kind are to be disregarded and that domain names and trademarks differing only in this way are legally identical.[ii]
The Panel finds that the disputed domain name is identical to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.[iii]
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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark 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 does not provide any evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent might hold relevant trademark rights. Complainant does not provide any evidence of how the disputed domain name has been used, if at all, but states its belief that Respondent is not conducting any business under the domain name.
The Panel’s own enquiries show that the disputed domain name resolves to a holding page with no functionality, showing images of a super car and a fashion model along with the statement: “Portfolio, Fashion and Automotive Photography”. It is not clear how long that page has existed but for the reasons which follow it is not necessary for the Panel to come to a final determination as to whether or not Complainant has made a prima facie case, nor whether it has established this aspect 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 that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) 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; or
(ii) the 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; or
(iii) the 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 respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
There is nothing in the evidence accompanying the Complaint to support a finding of bad faith registration and use under any of those four scenarios. Further, there is nothing to support a finding that the domain name was registered in bad faith. The domain name was created in 2000. The USPTO registration carries a date of first use in commerce of January 2013. There is no evidence to show use of the trademark anytime earlier and so nothing to infer that Respondent could have targeted the trademark at the time of the creation of the domain name.
The Panel finds the third limb of the Policy has not been established.
DECISION
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <superturbo.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 30, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) holding that “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).”; see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i).
[ii] See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[iii] Panel notes that whilst the respect dates of registration of the trademark and creation of the disputed domain name are not strictly relevant to the assessment of Complainant’s rights, in this case the domain name predates the trademark registration by many years, a matter of direct relevance to the other two elements of the Policy.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
