WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southwire Company, LLC v. Whois Agent, Domain Protection Services, Inc. / Michael Sbq
Case No. D2017-1788
1. The Parties
Complainant is Southwire Company, LLC of Carrollton, Georgia, United States of America ("United States"), represented by Eversheds Sutherland (US) LLP, United States.
Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States / Michael Sbq of Carrollton, Georgia, United States.
2. The Domain Name and Registrar
The disputed domain name <southwiress.com> (the "Domain Name") is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2017. On September 15, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on September 20, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 20, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 13, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 20, 2017. 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.
4. Factual Background
According to the Complaint, Complainant is "one of North America's leading manufacturers of wire and cable used in the distribution and transmission of electricity." Complainant alleges that one in three new homes built in the United States contains Complainant's wire. Complainant has used the mark SOUTHWIRE in commerce to identify and distinguish its goods since the 1950s. Complainant has put into the record of this proceeding several trademark registrations with the United States Patent and Trademark Office to confirm this fact, including Registration No. 635,490, registered on October 9, 1956. Complainant has also noted several registrations of the SOUTHWIRE mark in other countries. Complainant has owned the domain name <southwire.com> since 1994 and operates a website there.
The Domain Name was registered on May 31, 2017. The Domain Name does not resolve to an active website. The WhoIs registration details for the Domain Name show the street address of Respondent to be Complainant's street address.
5. Parties' Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark SOUTHWIRE through longstanding registration and substantial use. The Domain Name is confusingly similar to Complainant's mark, since it incorporates the mark SOUTHWIRE in its entirety and adds the letters "ss" which, in the Panel's view, do not meaningfully distinguish the Domain Name from the mark.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not come forward to explain its bona fides, if any, with respect to the Domain Name. There is no relationship between the Parties that would give rise to any authorization for Respondent to register the Domain Name incorporating Complainant's mark. The Domain Name resolves to an inactive website. An obvious bona fide use of the Domain Name does not emerge from the Domain Name itself or from anything in the record of this proceeding. These circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of 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 concludes that Respondent has registered and used the Domain Name in bad faith. This is due to several factors. First, the SOUTHWIRE mark had been widely used and registered at the time of this Domain Name registration. Second, the extent of Complainant's market penetration within the United States has been considerable. Third, Respondent has not denied knowledge of the SOUTHWIRE mark. Fourth, the WhoIs registration details show (falsely) Complainant's street address. As such, the Panel finds it more likely than not that Respondent had the SOUTHWIRE mark in mind when registering the Domain Name.
With respect to bad faith use of the Domain Name, the Panel notes that the factors set forth in Policy paragraph 4(b) are not exhaustive; other factors, individually or collectively, may be taken into account. Here, it is clear to the Panel that Respondent has some type of inchoate mischief in mind vis-à-vis the Domain Name. This conclusion derives chiefly from the fact that Respondent falsely indicated its street address to be Complainant's street address. The Domain Name has not been put to active use in the few months since its registration, but it is not necessary for the Panel (or Complainant) to wait around and see what Respondent is up to. Complainant's mark appears to be rather strong, and Respondent has already put out public and false information about the ownership of the Domain Name. It is not clear at this point whether Respondent intends to direct the Domain Name to a site where pay-per-click revenues may be derived, or where some sort of scam (whereby Respondent falsely holds itself out as Complainant) may be launched, or to some other site such as that of a competitor of Complainant. In any event, the circumstances here bring Respondent's heretofore "passive holding" within the scope of the doctrine first articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Again, given the strength of the mark in question and Respondent's misappropriation of Complainant's street address in its WhoIs details, passive holding here amounts to bad faith use. Complainant has raised other points in aid of its assertion of Respondent bad faith, but the Panel declines to discuss them because they are not necessary to this decision.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <southwiress.com> be transferred to Complainant.
Robert A. Badgley
Date: October 29, 2017