Ian Schrager and IS Company LLC d/b/a Ian Schrager Company v. Gary Prioste
Claim Number: FA1902001828418
Complainants are Ian Schrager and IS Company LLC d/b/a Ian Schrager Company ("Complainants"), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Gary Prioste ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ienschragercompany.com>, registered with Wild West Domains, LLC.
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.
David E. Sorkin as Panelist.
Complainants submitted a Complaint to the Forum electronically on February 4, 2019; the Forum received payment on February 4, 2019.
On February 4, 2019, Wild West Domains, LLC confirmed by email to the Forum that the <ienschragercompany.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 February 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@ienschragercompany.com. Also on February 11, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2019, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainants request that the domain name be transferred from Respondent to Complainant Ian Schrager.
A. Complainants
Complainant Ian Schrager and the company he owns, Complainant IS Company LLC d/b/a Ian Schrager Company, provide hospitality and real estate services under the IAN SCHRAGER mark. Complainant Schrager owns a U.S. trademark registration for the mark; the registration reflects a first use date of August 2005. Complainants also claim common law trademark rights in IAN SCHRAGER and IAN SCHRAGER COMPANY.
Respondent registered the disputed domain name <ienschragercompany.com> via a privacy registration service in December 2018. Complainants state that Respondent is not affiliated with them, has not been licensed or permitted to use their marks, and is not commonly known by the disputed domain name. The domain name does not resolve to a website. However, it has been used in an email message purporting to be from a high-ranking employee of Complainants that was sent to an associate of Complainants. Complainants characterize Respondent's registration and use of the disputed domain name as typosquatting and a fraudulent phishing scheme.
Complainants contend on the above grounds that the disputed domain name <ienschragercompany.com> is confusingly similar to their IAN SCHRAGER and IAN SCHRAGER COMPANY marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainants have rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 Complainants 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 Complainants have 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainants' undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. Webnet-Marketing, Inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." The Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint." The Panel considers the nexus between Complainant Schrager and his namesake company sufficient to warrant permitting them to proceed jointly under the Policy.
The disputed domain name incorporates Complainant Schrager's registered mark without authorization and corresponds, but for the substitution of a single letter, to the domain name used by Complainants in their business. Its only apparent use has been in connection what appears to be a fraudulent phishing scheme. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Swatch Group AG & Swatch AG v. Van Cole, FA 1827758 (Forum Feb. 25, 2019).
Complainants have made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainants have sustained their burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Respondent registered a domain name nearly identical to the domain name used by Complainants and incorporating Complainant Schrager's registered mark in its entirety, and has used it in what appears to be a fraudulent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Swatch Group AG & Swatch AG v. Van Cole, supra (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ienschragercompany.com> domain name be TRANSFERRED from Respondent to Complainant Ian Schrager.
David E. Sorkin, Panelist
Dated: March 7, 2019
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