Syncopated Systems™
Seriously Sound Science™

On the "Syncopated Software" Domain Name Dispute

by John R. Carlsen

This article refers to Syncopated Software Development Corp. v. Do Life Right, FA0608000780309 (National Arbitration Forum, Oct. 2, 2006), which is available online at < http://www.arb-forum.com/domains/decisions/780309.htm >. The decisions referenced therein may be found via the references section below.

Summary

In 2006, after finding that it's trademark "Syncopated Software" was being obviously infringed through four domain names, Syncopated attempted to protect its trademark by submitting an ICANN U.D.R.P. complaint. Despite its U.S. trademark registration, Syncopated was denied relief and, surprisingly, accused of attempted "Reverse Domain Name Hijacking".

History

On October 12, 2004, Syncopated began using its trademark "Syncopated Software" when it was incorporated in Texas as the Syncopated Software Development Corporation. Syncopated applied to register this trademark with the United States Patent and Trademark Office (U.S.P.T.O.) on October 27, 2004, followed by its regular use of the trademark in commerce and on its Web site at < http://www.oddgods.com >. On May 9, 2006, the U.S.P.T.O. approved Syncopated's application and assigned the "Syncopated Software" trademark registration number 3,091,462.

(For reasons unrelated to its domain name dispute, Syncopated also does business as "Syncopated Systems", for which its trademark registration is pending.)

By 2006, the "Syncopated Software" trademark had already been easily-locatable for roughly a year by searching the World Wide Web (with search engines such as Google), the U.S.P.T.O.'s Trademark Electronic Search System (TESS) or the Texas Comptroller of Public Accounts (via its Corporation Search page).

Yet, in January 2006, someone registered domain names consisting only of the "Syncopated Software" trademark appended by the global top-level domain names ".biz", ".com", ".info" and ".net"; Syncopated discovered two of these domain names in March 2006. According to Whois database records available at the time, the domain names were registered anonymously using Domains by Proxy, Inc., a subsidiary of the domain names' registrar Go Daddy Software.

Syncopated notified the registrant (via certified mail to the address listed in the Whois database) of its ownership and pending registration of the "Syncopated Software" trademark, the domain names' apparent infringement and Syncopated's intent to defend its trademark. At the time, Syncopated requested only that the registrant cancel the domain name registrations.

After being granted registration of its trademark and having failed to dissuade the domain name registrant from continuing its infringement, Syncopated attempted to protect its trademark by submitting a complaint on August 17, 2006, under the Internet Corporation for Assigned Names and Numbers' (ICANN's) Uniform Domain Name Dispute Resolution Policy (U.D.R.P.), selecting the National Arbitration Forum (N.A.F.) to provide arbitration. In filing the complaint, the registrant was determined to be Do Life Right, apparently a name assumed by Gregory D. Bentley of Arizona.

Through its decision delivered October 3, 2006, the N.A.F. denied relief to Syncopated and alleged that Syncopated had attempted "Reverse Domain Name Hijacking". Syncopated contends that the N.A.F. harmed Syncopated's position by materially breaching its contract to follow the ICANN U.D.R.P. rules and that this allegation – and its continued publication on the Web – further harms Syncopated through libelous defamation.

Through responding to the complaint and later on his Web site, Mr. Bentley stated his intention to let the disputed domain name registrations expire, which he did. The disputed domain names were subsequently re-registered by three parties apparently unrelated to Mr. Bentley. In May 2007, after being informed of their infringement of Syncopated's registered trademark and of Syncopated's intent to sue, all three parties promptly released their interests in the infringing domain names, after which Syncopated registered three of the four domain names. (The fourth – using the ".info" global top-level domain name – is considered inappropriate for commercial use.)

Analysis

After having reviewed the N.A.F.'s decision, Syncopated maintains its position that Syncopated filed its ICANN U.D.R.P. complaint in good faith, fulfilled the U.D.R.P. complaint requirements, and should have been granted the relief sought. Though Syncopated's filing was not aided by its brevity, the N.A.F.-selected sole panelist David H. Bernstein (and the N.A.F., through affirming its panelist's decision) demonstrated disregard for U.D.R.P. rules, including lack of impartiality, apparently prejudiced by the cost of the process itself (as cited by the panelist in his decision). This breach of process resulted in libelous allegations against and effectively defrauded Syncopated.

Wrong Abuse-of-Process Declaration

Syncopated asserts that the panelist, in making the "Reverse Domain Name Hijacking" allegation, failed to comply with the U.D.R.P., which does not prescribe that such an allegation should be made.

Panelist's Incorrect Allegation

As quoted by the panelist himself in his allegation, U.D.R.P. Rules Paragraph 15(e) prescribes that if he finds that the complaint was brought in bad faith, "the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". The Rule does not prescribe alleging "Reverse Domain Name Hijacking". Therefore, the declaration itself is incorrect as it is inconsistent with the Rule.

Complainant's Disinterest In Disputed Domain Names

Other than to protect its trademark from further infringement, Syncopated remains disinterested in the disputed domain names. Prior to submitting its complaint, Syncopated sought only the cancellation of the domain name registrations. Through incurring the expense of submitting this U.D.R.P. complaint, Syncopated sought the transfer of the domain names only as a practical matter to avoid additional future arbitration and/or litigation expenses regarding the disputed domain names.

Lack of Impartiality

Though the panelist appears to have established his prejudice through citing that the cost of the process itself was substantially more than the price at which Mr. Bentley offered to sell the disputed domain names, the panelist demonstrated his lack of impartiality in many other ways, as described below.

Panelist's Undue Speculation Favoring Respondent

The panelist's allegation that the Syncopated brought its complaint in bad faith and "for the purpose of harassing" Mr. Bentley was unfounded as it was based solely on the panelist's speculation into Syncopated's motives. Through this speculation, the panelist apparently also fails to consider the many demonstrations of Syncopated's good faith and that the cost of the process was borne entirely by Syncopated.

Even if Syncopated's motives were legitimate material factors in making the decision, the panelist's claim that Syncopated demonstrated bad faith relies upon speculation inconsistent with the preponderance of evidence prescribed by U.D.R.P. Rules Paragraphs 10(d) and §15(a), which respectively state "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence" and "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Furthermore, the U.D.R.P. does not require the panel to resort to such speculation; the panel could have requested a further statement per U.D.R.P. Paragraph 12, which states, "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."

Respondent's Apparent Cybersquatting

Due to the widely-recognized problem of rampant profiteering from trademark dilution and infringement by Internet "domain name squatters" or "cybersquatters" (a primary reason for the U.D.R.P.), Syncopated must consider that Mr. Bentley may have registered the domain names intending to seek greater financial gain and that, though the amount of excess consideration ultimately sought by Mr. Bentley was small, Mr. Bentley could have easily sought substantially more had Syncopated not immediately (and in good faith) informed Mr. Bentley of the federal registration of its trademark.

Mr. Bentley appeared to Syncopated as an abusive "cybersquatter" for many reasons, including the following:

  • Mr. Bentley registered the disputed domain names only after the name "Syncopated Software" had appeared both in the U.S.P.T.O. database and on Syncopated's Web site for more than a year (presumably enough time to be locatable using any major search engine).
  • Mr. Bentley registered the disputed domain names anonymously (by proxy).
  • Mr. Bentley did not use the disputed domain names to publish any information on the Web other than the apparent name of business and a short verse.
  • Though Mr. Bentley identified his company "Syncopated Software" on his Web site as a corporation, he apparently did not actually incorporate or register a corporation as required by the state of his residence (based on a search of corporations in Arizona) and has not, to date, provided any other credible evidence of his actual or intended legitimate business use of the disputed domain names.
  • When advised of the possibility of invoking the U.D.R.P., Mr. Bentley demonstrated ready knowledge of the process, including its costs.

Obviously, the panelist must also consider this possibility.

Respondent's Bad Faith Registration and Use

Despite the ineffectiveness of its complaint, Syncopated maintains its position that Mr. Bentley demonstrated both "bad faith registration" and "bad faith use" as required by U.D.R.P. Paragraph 4(a)(iii).

That Mr. Bentley replied to Syncopated's mailed notice via Syncopated's Web site demonstrates that he either had prior knowledge of Syncopated's existence or was capable of finding it via a Web search; Syncopated maintains its position that either case demonstrates Mr. Bentley's "bad faith registration". The first case, having prior knowledge of Syncopated's existence and registering the domain names anyway, demonstrates obvious bad faith, whether for the purpose of disturbing Syncopated's business, extorting some monetary gain, or for any other motive. The second case demonstrates that Mr. Bentley was capable of searching the Web and finding Syncopated (whether he actually searched for "Syncopated Software" or not); considering the trivial amount of effort required, Mr. Bentley therefore reasonably should have performed a search and learned of Syncopated's existence prior to registering the domain names, and that neglecting to do so would demonstrate further bad faith through reckless action lacking due diligence.

Syncopated continues to contend that Mr. Bentley demonstrated "bad faith use" by continuing to use the disputed domain names after being duly notified of the existence and registration of Syncopated's trademark. Furthermore, the federal registration of the trademark serves as constructive notice, so the actual notice given by Syncopated should be considered unnecessary in establishing Mr. Bentley's "bad faith use" after the trademark was registered. At the time Syncopated filed its complaint, the demonstrated knowing infringement (after he was given both constructive notice and actual notice) of a legitimate federally-protected registered trademark seemed too fundamental and obvious a demonstration of bad faith to cite so explicitly in the complaint.

Syncopated acknowledges that the panelist may have merely overlooked the obvious, but these demonstrations appear to have been completely disregarded by the panelist in a manner that unduly favored the respondent.

Respondent Necessitated Complainant's Action

Syncopated contends that, once aware of Mr. Bentley's registration of the disputed domain names, any inaction on the part of Syncopated would have likely been subsequently construed as tacit acceptance or endorsement of Mr. Bentley by Syncopated, further diluting the value of Syncopated's trademark. Thus, Mr. Bentley's registration and continued use of the disputed domain names actually necessitated Syncopated's action in order to protect the value of its trademark.

Complainant Served Respondent Due Notice

The panelist's reference to the matter as an "instant Complaint" insinuates that Syncopated acted improperly and demonstrates ignorance of the fact that Syncopated duly informed Mr. Bentley of the registration of its trademark, of Mr. Bentley's infringement, and of Syncopated's intent to defend its trademark through filing an ICANN U.D.R.P. complaint (and possible litigation) if the conflict was not resolved, after which Syncopated allowed sufficient time and discussion in attempt to resolve the dispute before invoking the process.

Complainant Demonstrated Good Faith

Syncopated maintains its position that its ICANN U.D.R.P. complaint was filed in good faith and that it duly demonstrated this good faith in:

  1. continuously providing public notice of Syncopated's regular use of the mark "Syncopated Software" via its incorporation, application for registration on the U.S.P.T.O. principal register, and on its Web site (each for more than a year preceding Mr. Bentley's domain name registrations),
  2. notifying Mr. Bentley of Syncopated's trademark, its desire for Mr. Bentley to voluntarily cease his infringement (by canceling the disputed domain names' registration), and its intent to seek action if the infringement continued,
  3. allowing ample time for discussion and for Mr. Bentley to cease his infringement, and
  4. attempting to resolve the dispute first via discussion and then arbitration rather than litigation (despite the U.D.R.P. arbitration's greater cost, which was borne entirely by Syncopated).

Excess Consideration Actually Sought by Respondent

The panelist overlooks the fact that the price sought by Mr. Bentley included Web site hosting costs. As these costs are not associated with the actual registration of the domain names, Syncopated interprets these costs as "valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name[s]", as described in U.D.R.P. Paragraph 4(b)(i).

Though the actual amount of excess consideration sought appears to be immaterial, that it was overlooked by the panelist contributes to the demonstration of the panelist's lack of impartiality.

Inappropriate Citations

In the majority (five of eight) of the cases cited in the decision (see references section, below), the panelist supports his reasoning by citing decisions in which he was either the sole panelist or presiding panelist. This practice of self-citation appears improper and potentially driven by deceptive and/or self-serving motive(s).

Furthermore, in the cited decisions in which the panelist was not on the panel, similar self-citations do not appear to be made by the panelist's peers. So, Syncopated contends that self-citation is also a practice not commonly-accepted among the panelist's peers.

Missed Deadlines

Without sufficient explanation, delays in the timeliness of some responses from both the provider and the panel exceeded time limits set forth in U.D.R.P. rules.

Actions Sought

Though Syncopated's dispute with Mr. Bentley appears to be concluded, Syncopated now finds itself engaged in an ongoing dispute with the N.A.F., as follows:

  1. As described above, the allegations of "Reverse Domain Name Hijacking", of bringing the complaint "for the purpose of harassing" Mr. Bentley and of filing an "instant Complaint" are unfounded and baseless in fact or procedure. Because they are also currently published by the N.A.F. on its Web site as part of its decision and are likely to be injurious to Syncopated's reputation, Syncopated considers these allegations libelous and therefore seeks to have them retracted.
  2. Syncopated protests the N.A.F.'s procedural irregularities, including the panelist's apparent lack of impartiality, the panelist's use of self-citations and the unexplained processing delays. Syncopated seeks to have the N.A.F. acknowledge its protest by including it in the N.A.F.'s Web-based publication of the decision.
  3. The service provided by the N.A.F. differs substantially and materially from that described in the U.D.R.P.. Therefore, N.A.F. appears to have defrauded Syncopated and thus Syncopated seeks to be refunded its filing fee.

In consideration of the above, Syncopated seeks to have ICANN bar the N.A.F. from providing further U.D.R.P. arbitration, removing the N.A.F. from its list of Approved Providers for Uniform Domain-Name Dispute-Resolution Policy.

References

Organizations

Decisions