Ushio Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1909001863888
Complainant is Ushio Inc. (“Complainant”), represented by Mark F. Warzecha of Widerman Malek, PL, Florida, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ushiojp.com> and <ushio-jp.com>, registered with Internet Domain Service Bs Corp, Internet Domain Service Bs Corp..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2019; the Forum received payment on September 25, 2019.
On September 26, 2019, Internet Domain Service Bs Corp, Internet Domain Service Bs Corp. confirmed by e-mail to the Forum that the <ushiojp.com> and <ushio-jp.com> domain names are registered with Internet Domain Service Bs Corp, Internet Domain Service Bs Corp. and that Respondent is the current registrant of the names. Internet Domain Service Bs Corp, Internet Domain Service Bs Corp. has verified that Respondent is bound by the Internet Domain Service Bs Corp, Internet Domain Service Bs Corp. 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 October 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@ushiojp.com, postmaster@ushio-jp.com. Also on October 3, 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 October 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is in the business of providing lamps, lights and lighting fixtures, among other goods under the USHIO mark. Complainant has rights in the USHIO mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,290,769, registered Aug. 21, 1984). See Amend. Compl. pg 3. The disputed domain names are confusingly similar to Complainant’s USHIO mark.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the <ushiojp.com> domain name resolves to an inactive webpage while the <ushio-jp.com> domain name resolves to Complainant’s website. Respondent is believed to be engaged in criminal activity in connection with the disputed domain names.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in criminal activity with the disputed domain names as it has contacted various individuals and corporations passing off as one of Complainant’s directors. Respondent requests third-parties to sign MOUs in an attempt to obtain personal or sensitive information.
B. Respondent
Respondent did not submit a Response.
1. The <ushiojp.com> and <ushio-jp.com> domain names were both registered on August 7, 2019.
2. Complainant has established rights in the USHIO mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,290,769, registered Aug. 21, 1984).
3. Respondent uses the <ushio-jp.com> domain name to redirect users to Complainant’s official website.
4. Respondent attempts to pass off as a director of Complainant’s organization and collect third-parties’ sensitive information and solicit funds.
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 claims rights in the USHIO mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,290,769, registered Aug. 21, 1984). See Amend. Compl. pg. 3. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel notes that Complainant failed to provide the relevant date of rights in the USHIO mark, but a TESS search revealed the registration date as August 21, 1984. The Panel therefore holds that Complainant’s registration of the USHIO mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues the disputed domain names are confusingly similar to the USHIO mark, but does not make any specific allegations. The Panel notes that the sole differences between the mark and disputed domain names are the addition of the letters “jp” (which may stand for “Japan”), a hyphen in one instance, and a “.com” generic top-level domain (“gTLD”) in both names. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore determines the disputed domain names are confusingly similar to the USHIO mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 makes no arguments under Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant first contends that Respondent uses the <ushio-jp.com> domain name to redirect users to Complainant’s official website. Such a use is not indicative of any rights or legitimate interests in the Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Complainant provides a screenshot of the disputed domain name’s resolving website which appears to be Complainant’s official website at the <ushio.co.jp> domain name. See Amend. Compl. Annex B. The Panel therefore finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant next asserts that Respondent’s inactive holding of the <ushiojp.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage. See Amend. Compl. A. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant further contends that Respondent’s lack of rights or legitimate interests in the disputed domain names is demonstrated via its use of the disputed names in connection with criminal activity. Specifically, Complainant argues that Respondent attempts to pass off as a director of Complainant’s organization and collect third-parties’ sensitive information and solicit funds. Use of a disputed domain name in connection with fraud or phishing is not indicative of any rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant provides a Declaration from its General Counsel, Ako S. Williams, who attests to the fraudulent scheme. See Amend. Compl. Annex C.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that its use of the disputed domain names as part of criminal activity to defraud and obtain sensitive information from third-parties is evidence of bad faith. Use of a disputed domain name to pass off as a complainant in order to defraud or phish for users’ personal information may suggest bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). The Panel recalls that Complainant provides a Declaration from its General Counsel, who claims that Respondent uses the disputed domain names to pass off as a director of Complainant’s organization as part of a money laundering and/or check washing scheme. See Amend. Compl. Annex C. The Panel therefore agrees with Complainant and finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ushiojp.com> and <ushio-jp.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 4, 2019
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