SSTowing.com: SyncPoint won UDRP with Reverse Domain Name Hijacking finding

DECISION

S & S Towing Inc. v. Host Admin / SyncPoint, Inc.
Claim Number: FA2503002145226

PARTIES
Complainant is S & S Towing Inc. (“Complainant”), represented by Aaron M. Arce Stark of STARK LAW LLC, District of Columbia, USA. Respondent is Host Admin / SyncPoint, Inc. (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is sstowing.com, registered with Dynadot Inc.

PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Alan L. Limbury, as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to FORUM electronically on March 14, 2025. FORUM received payment on March 14, 2025.

On March 16, 2025, Dynadot Inc confirmed by e-mail to FORUM that the sstowing.com domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 25, 2025, FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sstowing.com. Also on March 25, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on April 11, 2025.

On April 14, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, FORUM appointed Alan L. Limbury as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that FORUM has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS
A. Complainant
Complainant, S & S Towing Inc., has a pending trademark application with the United States Patent and Trademark Office (“USPTO”) for the mark S & S TOWING in International Class 039 for “Vehicle towing”. Complainant has prominently and extensively used, promoted, and advertised the mark for years. By virtue of these efforts, the mark has become well recognized by consumers as designating Complainant as the source of the services so marked. Accordingly, the mark is extremely valuable to Complainant.

The domain name is identical or confusingly similar to Complainant’s business name. Complainant has been operating as a legitimate towing service since at least 2017 and had lawfully owned and used the domain name sstowing.com since that time. The domain name was originally registered with GoDaddy and later transferred to Weebly, where it remained until 2021. Due to an administrative error—an expired credit card—the domain name was not renewed timely, and it was subsequently
acquired by Respondent.

The domain name sstowing.com is identical to Complainant’s trade name and business identity. Complainant’s customers and the general public associate this domain with Complainant’s established towing business. The unauthorized acquisition of the domain name by Respondent has led to consumer confusion, as the website deceptively appears to be affiliated with the original towing company while actually being used for profit by Respondent.

Respondent has no rights or legitimate interests in the domain name. Respondent is not associated with Complainant in any way. The domain name was automatically set for renewal and only lapsed due to an oversight in payment processing. Respondent has no legitimate claim to the domain name and is using it in bad faith to profit from Complainant’s business name and reputation. The website currently linked to sstowing.com deceptively suggests an association with Complainant’s towing business, while in reality, it redirects users to a WhatsApp contact for purchasing the domain name back. This tactic is a clear indication of cybersquatting, where a domain name is acquired solely to resell it at a higher price.

Respondent registered and is using the domain name in bad faith. The domain name was acquired solely because of its established association with Complainant’s towing business and was immediately used for commercial gain by redirecting users to a purchase inquiry rather than an operational business.

Respondent’s registration and use of the domain name create confusion among customers and damage Complainant’s ability to maintain an online presence for legitimate business operations.

Respondent’s actions constitute clear cybersquatting and domain piracy, as defined by the UDRP, in an attempt to extort payment from Complainant to regain control over its own business identity.

Complainant initially sought to reclaim the domain name as soon as it was taken over by Respondent but was given poor legal advice instructing them to wait until the domain expired instead of taking immediate action. As a result, the domain was not released as expected, leading to a further delay in recovering the business identity.

Respondent’s use of a privacy protection service further supports a finding of bad faith, as it obscures the true registrant’s identity and prevents transparency in ownership of the domain name.

B. Respondent
Respondent acquired the domain name sstowing.com in 2021 after it expired and was deleted by the registry. The domain appealed to Respondent because the term “SS” combined with “towing” is inherently descriptive and has generic commercial value, especially in the towing industry. Respondent had never heard of Complainant before this UDRP filing and had no knowledge of their business. The domain’s landing page merely states: “Site Name Registered” and includes a WhatsApp contact link. It does not indicate the domain is for sale. Complainant is based in Illinois; Respondent is in California. There is no geographical or business overlap.

The domain name is not identical or confusingly similar to a mark in which Complainant has rights. Complainant relies on a pending U.S. trademark application, filed March 13, 2025. A pending trademark does not confer rights under the UDRP. Complainant provides no evidence of acquired distinctiveness or secondary meaning, and no use predating Respondent’s acquisition is supported by independent documentation. The term “S&S Towing” is descriptive, and many third parties operate under similar names and domains, such as:

• SSTowingAndAutomotive.com
• SSTowingAndService.com
• SSTowingAndService.net
• SSTowingAustin.com
• SS-Towing.com
• SSTowingHawaii.com
• SSTowingHiram.com
• SSTowingLLC.com
• SSTowingLLC.org
• SSTowing.net
• SSTowingNV.com
• SSTowingRecovery.net
• SSTowingService.com
• SSTowing.site
• SSTowingTN.com
• SSTowingTX.com
• SandSTowingAndAutoSales.com
• SandSTowingAndRecovery.net
• SandSTowing.com
• SandSTowingKY.com
• SandSTowing.org.
These examples undermine any claim that “S&S Towing” uniquely identifies Complainant in the minds of consumers.

Respondent has rights or legitimate interests in the domain name. Domain names consisting of descriptive terms commonly used in an industry are routinely registered and held by domain investors. Respondent acquired sstowing.com lawfully after it was dropped from the registry. Respondent did so for its generic value, not to target Complainant. Respondent’s passive holding or use of a generic domain is not a violation of the Policy. There is no evidence of any infringing use, imitation of Complainant’s website, or misuse of their identity.

Complainant must prove that the domain name was both registered and used in bad faith. Complainant cannot do either. Respondent had never heard of Complainant prior to registering the domain name. Complainant’s business is small, local, and unknown to Respondent. The domain name does not impersonate Complainant or compete with them. There is no evidence of confusion or targeting. There is no offer to sell. The site does not state the domain is for sale. Merely providing a contact method does not constitute a bad faith offer.

Use of privacy: WHOIS was sunset by ICANN as of January 28, 2025, and RDAP (Registration Data Access Protocol) now automatically redacts registrant data. Respondent did not manually enable privacy.

Complainant’s claim that Respondent waited to sell the domain name back is contradicted by their own delay. They admit taking no action until 2025 despite knowing the domain name was registered in 2021. This undermines any claim of harm or urgency and supports a laches defense.

This case meets the standard for Reverse Domain Name Hijacking (RDNH). Complainant filed the Complaint knowing it had no registered trademark and failed to disclose that numerous other parties use similar names. The domain name was acquired in good faith and held for over 3 years without issue. Complainant waited years to act and now misrepresents the facts. This proceeding appears to be a bad faith attempt to recover a domain name Complainant let lapse due to their own negligence, by misusing the UDRP process. This is precisely the type of abuse that the RDNH provision exists to deter.

FINDINGS
Complainant has failed to establish all the elements entitling it to relief and has engaged in RDNH.

DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar
Complainant has provided no evidence to support its assertion that “Complainant has prominently and extensively used, promoted, and advertised the mark for years”, nor that through use, it has acquired common law trademark rights in the term S & S TOWING. While its application to register that mark with the USPTO (Serial No. 99081805) is pending, it does not give rise to rights in a mark under the Policy.

Accordingly, the Panel finds that Complainant has failed to establish that the domain name is identical and/or confusingly similar to a trademark or service mark in which Complainant has rights.

Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The sstowing.com domain name was registered by Respondent on August 10, 2021, after its previous registration by Complainant had expired. The word “towing” is descriptive and, as Respondent has shown, many third parties operate under similar domain names combining the letters “ss” with “towing”. There is no evidence that Respondent, in registering the descriptive domain name after it was dropped, had Complainant in mind, nor that Respondent has used the domain name in any way adverse to Complainant.

Under these circumstances the Panel finds that Complainant has failed to show absence of rights or legitimate interests in respect of the domain name on the part of Respondent.

Registration and Use in Bad Faith
Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: “the domain name has been registered and is being used in bad faith”. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, namely:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
There is no evidence before the Panel to support any of these circumstances, nor that Respondent has acted otherwise in bad faith.

Complainant has failed to establish this element.

Reverse Domain Name Hijacking

Reverse Domain Name Hijacking (“RDNH”) is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Rule 15(e) provides, in part:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Complainant’s pending application to register the S & S TOWING mark with the USPTO (Serial No. 99081805) was filed by Complainant’s Counsel on March 13, 2025, the day before the filing of this Complaint (Complaint Exhibit 2).

The Complaint does not claim that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Rather, the Complaint claims: “The domain name is identical or confusingly similar to Complainant’s business name”.

On the evidence before the Panel, Complainant had not established reputation in its then non-existent mark when Respondent registered the sstowing.com domain name in 2021.

The Panel considers that Complainant, represented by Counsel, must have known that its Complaint should fail to establish rights in a mark at any time prior to the filing of this Complaint.

The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the sstowing.com domain name REMAIN WITH Respondent.

Alan L. Limbury, Panelist
Dated: April 15, 2025