Gaumard Scientific Company, Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1905001844074
Complainant is Gaumard Scientific Company, Inc. (“Complainant”), represented by Tiffany Ferris of Haynes and Boone, LLP, Texas, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gaumard-usa.com>, registered with Dynadot, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2019; the Forum received payment on May 20, 2019.
On May 26, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <gaumard-usa.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 May 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2019 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@gaumard-usa.com. Also on May 30, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 201, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant operates in the health care education industry with a focus on simulators for training. Complainant has rights in the GAUMARD trademark based upon its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,656,041 registered Sep. 10, 1991). Respondent’s <gaumard-usa.com> domain name is identical or confusingly similar to Complainant’s GAUMARD trademark because it wholly incorporates Complainant’s GAUMARD trademark, and merely adds a hyphen, the geographic term “usa” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <gaumard-usa.com> domain name. Respondent is not authorized to use Complainant’s GAUMARD trademark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to engage in a phishing scheme via email. Furthermore, Respondent does not make an active use of the disputed domain name as the resolving webpage is parked.
Respondent registered and uses the <gaumard-usa.com> domain name in bad faith because Respondent uses the disputed domain name to engage in a phishing scheme. Finally, Respondent had actual knowledge of Complainant’s GAUMARD trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
U.S. Trademark Registration No. 1,656,041 GAUMARD (word), registered September 10, 1991 for goods in class 9;
China Trademark Registration No. 19333205 GAUMARD (word), registered April 21, 2017 for goods in class 9;
European Union Trade Mark Registration No. 015212749 GAUMARD (word), registered August 2, 2016 for goods in class 9;
Taiwan Trademark Registration No. 1825593 GAUMARD (word), registered February 16, 2017 for goods in classes 9 and 16.
Respondent registered the disputed domain name on May 7, 2019.
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 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the GAUMARD trademark based upon several trademark registrations, including registration with the USPTO (e.g., Reg. No. 1,656,041 registered September 10, 1991). Registration of a trademark with the USPTO is sufficient to establish rights in the trademark pursuant to Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds that Complainant has rights in the GAUMARD trademark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s domain name <gaumard-usa.com> is identical or confusingly similar to Complainant’s trademark as it wholly incorporates the GAUMARD trademark and merely adds a hyphen, the geographic term “usa” and the “.com” gTLD. The addition of a geographic term, a hyphen and a gTLD to a complainant’s trademark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel agree with Complainant and finds that Respondent’s disputed domain name is confusingly similar to the Complainant’s GAUMARD trademark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <gaumard-usa.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the GAUMARD trademark. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS identifies “Super Privacy Service LTD c/o Dynadot” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the trademark GAUMARD for any purpose. Accordingly, the Panel agree that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to send emails in furtherance of a phishing scheme. Using a disputed domain name to send emails in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”); see also Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent does not make an active use of the disputed domain name as the resolving webpage is parked. A respondent’s non-use of a disputed domain name can demonstrate that the respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant provides screenshots of the disputed domain name’s resolving inactive webpage, which states “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <gaumard-usa.com> domain name in bad faith because Respondent uses the disputed domain name to engage in a phishing scheme via email. A respondent’s use of a disputed domain name to send fraudulent emails supports a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Here, the Panel notes that the Complainant provides copies of an email sent from Respondent where Respondent falsely represents himself/herself to be a sales executive at the Complainant, and fraudulently told the recipient - who was not Complainant’s customer - that its order of Complainant’s product, a maternal and neonatal birthing simulator, would be delayed. Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Next, Complainant asserts that Respondent had actual knowledge and/or constructive notice of Complainant’s rights in the GAUMARD trademark as the result of Complainant’s extensive use of the trademark predating the date on which Respondent registered the <gaumard-usa.com> domain name and Respondent’s use of the disputed domain to engage in a phishing scheme using Complainant’s GAUMARD trademark. Although constructive notice is not sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). In this case, the use of a domain name in an email address meant to confuse the recipient through similarity to a trademark is bad faith use of the disputed domain name, and such use - in combination with the fact that the disputed domain name includes the country name (“USA”) of the Complainant – clearly points to the fact that Respondent registered and used <gaumard-usa.com> with full knowledge of the Complainant’s rights. Thus the Panel finds that Respondent had actual notice of Complainant’s rights in the GAUMARD trademark under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gaumard-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 23, 2019
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