WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SecretLab SG Pte Ltd v. Jason Bright, Secret Lab LLC
Case No. D2018-2807
1. The Parties
Complainant is SecretLab SG Pte Ltd of Singapore, Singapore, represented by Tara Adams Law, Australia.
Respondent is Jason Bright, Secret Lab LLC of Minneapolis, Minnesota, United States of America (“United States”), represented by Terrance C. Newby, United States.
2. The Domain Names and Registrar
The disputed domain names <secretlab.com> and <thesecretlab.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2018. On December 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification dated December 11, 2018 by the Center that the Complaint was administratively deficient, Complainant filed two amended Complaints, the first on December 12, 2018 and the second on December 13, 2019.
The Center verified that the Complaint together with the amended Complaints 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 December 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2019. On December 18, 2018, the due date for Response was extended until January 10, 2019 under paragraph 5(b) of the Rules. The Response was filed with the Center on January 10, 2019.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on January 21, 2019. 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 publicly available WhoIs information, the Domain Names were both registered on July 16, 1998.
Complainant is a Singapore registered company with its principal place of business in Singapore. It is also an Australian registered foreign entity doing business in Australia.
Complainant is the registered owner of the SECRETLAB trade marks i.a. for furniture as follows:
1. Trade Mark Reg. No. 40201504852Q, Singapore, registered on March 23, 2015;
2. Trade Mark Reg. No. 2016063646, Malaysia, registered on December 7, 2015;
3. Trade Mark Reg. No. 5402936, United States, registered on December 18, 2016;
4. Trade Mark Reg. No. 1815134, Australia, registered on December 12, 2016;
5. Trade Mark Reg. No. 17915512, European Union, registered on June 11, 2018;
6. Trade Mark App No. 40201812807U (pending), Singapore, application lodged June 29, 2018; and
7. Trade Mark App No. 1903624 (pending), Canada, application lodged on June 11, 2018
5. Parties’ Contentions
Complainant advises that it uses Complainant’s Marks in all jurisdictions and trades solely using the SECRETLAB marks on its products, as evidenced on each of its websites at the following domain names:
e. <secretlabchairs.ca>; and
Complainant submits that the Domain Names are confusingly similar to Complainant’s Marks because both Domain Names are virtually identical to Complainant’s Marks, in that the term “secretlab” is used in its entirety, with the addition of the word “the” in the Domain Name <thesecretlab.com>.
Complainant asserts that there is no evidence that, prior to registering the Domain Names, Respondent had ever been known, or done business, as “secretlab”.
Complainant advises that it contacted Respondent several times over the past 18 months in an attempt to see if Respondent intended to use the Domain Names, had any legitimate interest in them, or would sell the Domain Names to Complainant. Complainant states that Respondent indicated he would not sell the Domain Names for under USD 30,000. Complainant further states that it counter-offered with USD 20,000 but received no response from Respondent to that counter-offer.
Complainant asserts that there has been no use recorded by Internet Archive database for the Domain Names since they were created on July 16, 1998, and they have been parked. However, following Complainant’s contact with Respondent in August 2018, the website URL for the Domain Name <secretlab.com> was changed so that it now redirects to a business page which Complainant submits appears to be a fake business as there are no working links to any directories or social media sites set up on the website. The link to the software and app development is not a legitimate link – the WaitHopper app does not appear on the iOS, Android, Windows, or macOS application software lists as registered.
Complainant further asserts that in May 2018 Respondent lodged a trade mark application for SECRETLAB in the United States with an intent to use claim (under Trade Marks Act1946 (15 U.S.C. § 1051) section 1(b) for software applications and Software as a Service.
Complainant contends that Respondent had constructive knowledge of Complainant’s Marks and therefore has no rights or legitimate interests in respect of the Domain Names, and that Respondent has registered and is using the Domain Names in bad faith.
Complainant considers Respondent has registered and is continuing to hold and use the Domain Names in bad faith, having not used the Domain Names for over 20 years, and with the specific intent to take advantage of inadvertent mistakes by the Internet.
Complainant goes on to assert that there is no evidence that the Domain Names have been used in connection with a bona fide offering of goods or services, and nor is Respondent making a legitimate noncommercial nor fair use of the Domain Names.
Complainant submits that this disrupts Complainant’s business and frustrates Complainant’s customers, or potential customers, who, not realising their mistake, are apt to blame Complainant for not having the web presence they expected when they reach the landing page.
Respondent points out that the earliest registration of Complainant’s Marks was made 17 years after Respondent first registered the Domain Names.
Respondent denies that that Complainant’s Marks are identical to the Domain Names as Complainant uses Complainant’s Marks to promote furniture, namely chairs whereas Respondent uses the Domain Names to help fledgling businesses grow. Respondent states that its primary business is helping fledgling businesses develop consumer-based apps.
While Respondent admits that its Domain Names may be phonetically similar to Complainant’s Marks, it refutes the claims that the Domain Names are identical or confusingly similar given the differences in products and services, and the uses of the Marks and Domain Names. By way of example Respondent asserts that an Internet user searching for Complainant’s furniture products will not be confused by Respondent’s services to startups.
Respondent asserts that it is actively doing business using the Domain Names and as early as December 17, 2005, the Domain Name <secretlab.com> was an active website, as it also currently is.
Respondent denies Complainant’s assertions that after August 2018, the website URL now redirects to a business page that appears to be fake or a sham business, and states that the website <http://www.secretlab.com/> currently directs to Respondent’s business, where a description of Respondent’s business can be found:
“Based in downtown Minneapolis, SecretLab is focused on creating a more connected and efficient future. With focus on consumer based apps, understanding an ever changing marketplace is of the utmost importance. Relaying digital consumer feedback into a free flowing and evolving product will be essential for any company moving forward in the 21st century. SecretLab is focused on creating strategic partnerships with organizations aligned with these goals.”
Respondent also states that its other Domain Name, <thesecretlab.com> also directs to the same site as <secretlab.com>. Thus, Respondent is actively and continuously using both Domain Names.
In addition, Respondent states that it filed its Articles of Organization with the State of Minnesota on January 26, 2018 and its amended Articles of Organization on May 15, 2018, changing its name from Secret Lab, LLC, to SecretLab, LLC.
Respondent notes that Complainant filed its original complaint on November 30, 2018, and the amended complaint on December 12, 2018. Thus, before Respondent had received official notice of this dispute, Respondent had not only used the Domain Names in connection with a bona fide offering of goods or services, it had also registered its company name with the Minnesota Secretary of State. Respondent contends that registering the company name with the Minnesota Secretary of State demonstrates that it has been, or is commonly known by, the Domain Names before this dispute commenced.
Respondent also claims that the assertion of Complainant that its Singapore trademark had been registered in Singapore since March 23, 2015 is false as the trademark application shows an application date of June 29, 2018.
Respondent asserts that it refused to sell the Domain Names to Complainant because Respondent uses them to promote its services. On December 8, 2016, Respondent advised Complainant that it would not sell the Domain Names “because I use them more now that I sold my business.” Respondent contends that its refusal to sell the Domain Names because it is using them demonstrates that it has rights and legitimate interests in the Domain Names.
Respondent further asserts that the domain names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant. Respondent goes on to say that Complainant first sought out Respondent and asked to purchase Respondent’s Domain Names. Respondent never approached Complainant or offered to sell the Domain Names until after Respondent initiated contact. Complainant first contacted Respondent on December 3, 2016 and offered to buy the Domain Names for USD 3,000. Respondent asserts it offered to sell them for USD 30,000 and Complainant counter offered with USD 20,000. Respondent advises that no further discussions took place.
Respondent also claims that Complainant contacted Respondent after the commencement of this proceeding and indicated that the proceeding was instituted to help Complainant gain leverage in its efforts to buy the Domain Names.
Respondent asserts that it registered the Domain Names in 1998, whilst Complainant founded its chair company in 2014. Respondent could not have known, in 1998, that Complainants would found a furniture company 16 years later. Moreover, Complainant promotes its products using a domain name, namely <secretlab.co>, that is very close to the Domain Names. Respondent contends that Complainant apparently has no trouble using this domain name to promote its chairs and accessories. Respondent has never challenged or complained about Complainant’s use of the <secretlab.co> domain name. Thus, the Domain Names were not registered in order to prevent Complainant from reflecting the mark in a corresponding domain name.
Respondent points out that Complainant and Respondent are not competitors and asserts that the Domain Names were not registered to disrupt Complainant’s business as contended by Complainant. Further, Complainant offers no evidence of disruption or confusion among its customers to support this assertion.
Respondent claims that its refusal to sell the Domain Names at Complainant’s preferred price does not constitute cybersquatting, but rather is a matter for the marketplace.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant’s Marks have been registered in a number of countries; between 2015 and 2018. Complainant’s Marks have, it seems, also been used by Complainant in relation to its range of furniture.
Complainant contends that the Domain Names are confusingly similar to Complainant’s Marks insofar as the term “secretlab” is used in its entirety, with the addition of the word “the” in the Domain Name <thesecretlab.com>.
There is merit in this contention. The Panel is satisfied that Complainant has established that:
a) It has rights in respect of Complainant’s Marks.
b) The Domain Names are confusingly similar to Complainant’s Marks.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names and that there is no evidence that, prior to registering the Domain Names, Respondent had ever been known, or done business, as “secretlab”. Further, Complainant asserts that there has been no use recorded by Internet Archive Database for the Domain Names since they were created on 16 July 1998, and they have been parked. However, Respondent has provided evidence showing at least the existence of a holding page comprising the photograph of a man on a motorcycle accompanied by the name “The Secret Lab”. The Wayback Machine identifies entries for the Domain Name <secretlab.com> in 2005, 2006, and 2008 and for the Domain Name <thesecretlab.com> in 2013.
Whether the passive holding of a domain name is acceptable or not depends on the circumstances of such holding. Factors relevant in the present case include the length of time that Respondent registered the Domain Names prior to any use by Complainant, the evidence Respondent has provided of its use, albeit limited, of the Domain Names, the plausible explanation given by Respondent as to its choice of the Domain Names and finally the plausibility of the use of the Domain Names in relation to computer related services.
Further, Respondent contends that prior to receiving notice of the dispute, Respondent had used the Domain Names in connection with a bona fide offering of services (software related services), it had also registered its company name with the Minnesota Secretary of State.
A directly relevant factor in terms of rights or legitimate interests is the fact that Respondent registered the Domain Names long before Complainant used and registered Complainant’s Marks.
For these reasons, the Panel is satisfied that the second element of the Policy is not satisfied.
C. Registered and Used in Bad Faith
In the Panel’s view, in the present case, absent countervailing circumstances, Respondent registered the Domain Names some 16 years before Complainant started using and seeking to register Complainant’s Marks. It is difficult under those circumstances to see how the registration of the Domain Names could constitute bad faith conduct. The Panel does wonder about the timing of the various sales correspondence and Respondent’s registration with its Secretary of State; the registration of the Domain Names however is highly relevant, if not determinative, under these particular circumstances.
Complainant and Respondent trade in different territories and in different markets and given the significant passage of time under which Respondent has held the Domain Names the Panel is not satisfied that bad faith conduct can be imputed to Respondent’s registration of the Domain Names.
For the foregoing reasons, the Complaint is denied.
Clive L. Elliott
Date: February 7, 2019