Complainant is Quilter Labs, LLC of Costa Mesa, California, United States of America (“United States of America”), United States, represented internally.
Respondent is Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot of San Mateo, California, United States.
The disputed domain name <panoptigon.com> is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2018. On September 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2018, the Registrar transmitted by email 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 email communication to Complainant on September 27, 2018 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 September 29, 2018, and a second amended Complaint on October 5, 2018.
The Center verified that the Complaint together with the Complaint as amended 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 October 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 30, 2018. 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 has filed an application for registration of the word trademark PANOPTIGON on the Principal Register of the United States Patent and Trademark Office (“USPTO”), serial number 87889278, application dated April 23, 2018, in international class 15, covering keyboard instruments, as further specified. The aforesaid application was published for opposition by the USPTO on September 25, 2018. No opposition has been filed as of the date of this proceeding.
Complainant is principally a producer and distributor of musical instrument products, including guitar amplifiers. Complainant developed and initiated marketing of a keyboard product (a “prototype MIDI‑controlled Optigan/Orchestron disc player”) under the trademark PANOPTIGON at least as early as January 2018. Complainant has expended financial resources in promoting its PANOPTIGON product at an industry trade show.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification the record of registration for the disputed domain name was created on April 26, 2018, and Respondent was registrant at that date.
As of September 16, 2018, the disputed domain name was directed to a website headed with the name of the enterprise “undeveloped”, with subheading “Buy domains safely & easily”. The disputed domain name is offered for sale by “Expired Domain Resource” at a price of USD 988.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant contends that it owns common law trademark rights in the term PANOPTIGON based on use in commerce in the United States. Complainant alleges that the term PANOPTIGON is a coined term and has no dictionary meaning.
Complainant alleges that the disputed domain name is identical or confusingly similar to its trademark.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent has not used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (2) Respondent has not been commonly known by the disputed domain name and does not hold any rights in the PANOPTIGON trademark, and; (3) Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, and is using it in a way that will tarnish the reputation of Complainant’s trademark.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has offered to sell the disputed domain name for valuable consideration substantially in excess of its out-of-pocket expenses associated with the disputed domain name; (2) Respondent has used a privacy protection service to prevent being held accountable for the consequences of its bad faith action; (3) the circumstances in which Respondent registered the disputed domain name almost immediately following Complainant’s application for registration of its arbitrary trademark at the USPTO indicates that Respondent sought to take advantage of Complainant’s application by selling the disputed domain name to Complainant or a competitor, and; (4) Respondent’s use of the disputed domain name diverts Internet traffic from Complainant and interferes with Complainant’s ability to promote its products.
Respondent did not reply to Complainant’s contentions.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier records indicate successful delivery of the Complaint to the address listed in Respondent’s record of registration. There is no indication in the record of this proceeding of difficulties in transmitting email to the addresses provided by Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of unregistered or common law rights in the trademark PANOPTIGON in the United States based on use in commerce beginning at least as early as January 2018. Because Complainant’s trademark is a fanciful or coined term, it is inherently distinctive as a matter of United States trademark law and does not require a demonstration of secondary meaning to establish status as a trademark. As a general proposition a party’s claims are well served by including available relevant evidence demonstrating that the mark has become a distinctive identifier as indicated in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
Respondent has not contested Complainant’s assertion of unregistered or common law trademark rights. The Panel determines that Complainant has rights in the trademark PANOPTIGON.
The disputed domain name is identical to Complainant’s trademark, adding only the generic Top-Level Domain (“gTLD”) “.com”. The Panel determines that the disputed domain name is identical to Complainant’s trademark from the standpoint of the Policy.
The Panel determines that Complainant has rights in the trademark PANOPTIGON and that the disputed domain name is identical to that trademark.
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s offering the disputed domain name for sale at a price substantially in excess of its out‑of‑pocket expenses in connection with the disputed domain name does not establish rights or legitimate interests in the disputed domain name.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Those are: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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; (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 [the respondent has] engaged in a pattern of such conduct; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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 respondent’s] website or location.”
Complainant’s trademark is a coined or fanciful term that is inherently distinctive. Respondent registered the disputed domain name three days following Complainant’s submission of an application for registration of that distinctive trademark at the USPTO. To the Panel this chain of events appears highly unlikely to be coincidental. Respondent subsequently offered the disputed domain name incorporating Complainant’s distinctive trademark for sale at a price substantially in excess of its out-of-pocket expenses in connection with its registration of the disputed domain name. Respondent has not offered any explanation for its decision to register the disputed domain name. The Panel infers that Respondent registered the disputed domain name with the intent to sell it to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent’s out-of-pocket expenses associated with the disputed domain name. The Panel determines that Complainant has established that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <panoptigon.com>, be transferred to Complainant.
Frederick M. Abbott
Date: November 11, 2018
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