The UDRP that was filed at the National Arbitration Forum delivered a surprising result despite the lack of a compliant response: Complaint was denied.
It was an early Christmas gift by a very experienced panelist, Sandra J. Franklin, who has been a panelist in 80 UDRP cases involving 174 domains, with a 90% transfer rate. Source: DNDisputes.
LE Holdings LLC v. Andy Booth
Claim Number: FA2011001919165
Complainant is LE Holdings LLC (“Complainant”), represented by LE Holdings LLC, California, USA. Respondent is Andy Booth (“Respondent”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartwallet.com>, registered with Uniregistrar Corp.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2020; the Forum received payment on November 2, 2020.
On November 2, 2020 and November 13, 2020, Uniregistrar Corp; confirmed by e-mail to the Forum that the <smartwallet.com> domain name is registered with Uniregistrar Corp; and that Respondent is the current registrant of the name. Uniregistrar Corp; has verified that Respondent is bound by the Uniregistrar Corp; 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 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2020 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 [email protected] Also on November 19, 2020, 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 timely and complete response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent submitted noncompliant correspondence between November 19 and December 14, 2020.
On December 18, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 a timely, complete response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <smartwallet.com> domain name is confusingly similar to Complainant’s SMART WALLET mark.
2. Respondent does not have any rights or legitimate interests in the <smartwallet.com> domain name.
3. Respondent registered and uses the <smartwallet.com> domain name in bad faith.
B. Respondent did not file a compliant Response.
Complainant is the parent company of Mosaic brands, developer of the “Smart Wallet” product. Complainant holds a registration for the SMART WALLET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 3,839,388, registered Aug. 24, 2010).
Respondent registered the <smartwallet.com> domain name on Nov. 13, 2001, and offers it for sale.
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 timely, complete 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).Identical and/or Confusingly Similar
Complainant claims rights in the SMART WALLET mark through its registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the SMART WALLET mark under Policy ¶ 4(a)(i).
Respondent’s <smartwallet.com> domain name is virtually identical to Complainant’s SMART WALLET mark. Under Policy ¶ 4(a)(i), the addition of the “.com” gTLD is insufficient to differentiate a disputed domain name from the mark it incorporates. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Accordingly, the Panel finds that Respondent’s <smartwallet.com> domain name is identical to Complainant’s SMART WALLET mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests/Bad Faith
The Panel notes that Respondent registered the <smartwallet.com> domain name on Nov. 13, 2001, many years ahead of Complainant’s first claimed rights in the SMART WALLET mark. Complainant filed its trademark application for SMART WALLET on March 20, 2006, and the Registration Certificate shows April 16, 2010, as the first use date. Thus, Respondent’s registration of <smartwallet.com> significantly precedes even Complainant’s trademark application filing date.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name because it is holding the domain name and offering it for sale. The Panel finds that Respondent, as the holder of a domain name legitmately registered in 2001, is entitled to use or sell the domain name as it sees fit. Investing and even speculating on domain names is a legitimate business. On the facts presented by Complainant, Complainant has no claim on the <smartwallet.com> domain name. The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
The Panel notes that, if Respondent’s registration of the <smartwallet.com> domain name predates Complainant’s first claimed rights in the SMART WALLET mark, Complainant cannot prove bad faith under Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See 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.”); see also Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”).
The Panel also finds that, on the facts presented, Respondent has not registered or used the <smartwallet.com> domain name in bad faith under any of the factors listed in Policy ¶ 4(b). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, there is no bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).
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 <smartwallet.com> domain name REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: December 21, 2020
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