Complainant is Event Robot Inc., d/b/a Socialcast, San Francisco, California, United States of America, represented by Ridder, Costa & Johnstone LLP, United States of America.
Respondent is SEGC@NC.RR.COM / Ralphael Locklear,(technical Contact), North Carolina, United States of America.
The disputed domain name <social-cast.com> (the “Domain Name”) is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2010. On April 30, 2010, the Center transmitted by e-mail to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On April 30, 2010, Wild West Domains, Inc. transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on May 5, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 8, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on June 4, 2010.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 15, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant markets application service provider (ASP) services, including the hosting of computer software applications of others, under the mark SOCIALCAST. Complainant has used this mark in commerce since March 2005, and the mark was registered with the United States Patent and Trademark Office in July 2008.
Respondent registered the Domain Name in January 2010. The Domain Name resolves to a website which offers various downloadable electronic applications, including applications for a desktop computer and an Apple iPhone.
Complainant's counsel sent Respondent a cease-and-desist letter dated February 22, 2010, in which Complainant demanded, among other things, that Respondent transfer the Domain Name to Complainant. By e-mail dated March 15, 2010, Respondent asserted to Complainant's counsel that he had spent $30,000 to build his website and brand. There was no attempt to break down the alleged $30,000 outlay, and no back-up documentation was provided then or since. Respondent asked to be compensated “in full” to transfer the Domain Name and pursue his “venture” under another name.
Complainant's counsel responded by e-mail on March 16, 2010, offering to pay $500 for the Domain Name. On April 8, 2010, Respondent responded in an e-mail that $500 was “an insult” and that Complainant would “need to counter with a WAYYYYYYY better option.” This Complaint followed on April 29, 2010.
Based on the facts set forth above and established through annexes to the Complaint, Complainant maintains that Respondent has violated the Policy and that a transfer of the Domain Name is warranted.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
There is no question that Complainant has rights in the registered mark SOCIALCAST. In addition, the Panel finds that the mere addition of a hyphen in the Domain Name does not negate the confusing similarity between the mark and the Domain Name. See Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038 (March 17, 2000) (<euro-tunnel.com> is “confusingly similar” to EUROTUNNEL mark despite hyphen).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as he does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003), correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions.
There is no evidence that Respondent has ever been authorized to use Complainant's mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Respondent has never come forward with evidence that he actually spent $30,000 on the website and brand. Even if he had done so, such preparations would not have been bona fide since Respondent was using a Domain Name confusingly similar to Complainant's existing registered mark to offer competing services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has 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 that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel finds that Respondent is in “bad faith” under both paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
As respects paragraph 4(b)(i), the Panel concludes that Respondent sought to turn a substantial profit from the transfer of the Domain Name for $30,000, or at least some amount far higher than the $500 offer made by Complainant.
As respects paragraph 4(b)(iv), the Panel concludes that Respondent had Complainant's SOCIALCAST mark in mind when registering the Domain Name. This conclusion is reached not because of the constructive notice imparted by the USPTO registration, but is inferred because the offerings at Respondent's website appear very similar to Complainant's ASP offerings. Further, Complainant has alleged, and Respondent has not denied, that Respondent has intentionally sought to attract, for commercial gain, Internet users to Respondent's site by creating a likelihood of confusion between the SOCIALCAST mark and the Domain Name.
In the end, it appears that Respondent's aim was to siphon off Internet traffic from Complainant until such time as Complainant discovered the mischief, and then seek a heavy ransom for the transfer of the Domain Name and cessation of activities.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <social-cast.com> be transferred to Complainant.
Robert A. Badgley
Dated: June 17, 2010