Ecolab USA Inc. v. Jason Skolovo / H-Madix Infortec
Claim Number: FA1911001872953
Complainant is Ecolab USA Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, United States. Respondent is Jason Skolovo / H-Madix Infortec (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecoliab.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 25, 2019; the Forum received payment on November 25, 2019.
On November 26, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ecoliab.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@ecoliab.com. Also on November 26, 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 December 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Ecolab USA Inc., is in the business of developing water, hygiene, and energy technologies. Complainant has rights in the ECOLAB mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,525,025, registered Feb. 21, 1989). See Compl. Ex. B. Respondent’s <ecoliab.com> domain name is identical and/or confusingly similar to Complainant’s mark because it is a misspelling of Complainant’s ECOLAB mark that simply adds one letter and a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <ecoliab.com> domain name. Respondent is not commonly known by the disputed domain name and is not licensed or authorized to use Complainant’s ECOLAB mark. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses emails based on the domain name to further a phishing scheme.
Respondent registered and uses the <ecoliab.com> domain name in bad faith. Respondent uses the domain name to engage in phishing through emails. Additionally, Respondent’s use of typosquatting is further evidence of bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the mark as seen through Respondent’s email communication posing as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that is in the business of developing water, hygiene, and energy technologies.
2. Complainant has established its trademark rights in the ECOLAB mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,525,025, registered Feb. 21, 1989).
3. Respondent registered the disputed domain name on September 11, 2019.
4. Respondent uses emails based on the domain name to further a phishing scheme.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ECOLAB mark based upon the registration with the USPTO (e.g., Reg. No. 1,525,025, registered Feb. 21, 1989). See Compl. Ex. B. Registration of a mark with the USPTO is generally sufficient to acquire rights in the mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Since Complainant provides evidence of registration of the ECOLAB mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ECOLAB mark Complainant argues that Respondent’s <ecoliab.com> domain name is identical and/or confusingly similar to Complainant’s mark because it is simply a misspelling of Complainant’s ECOLAB mark with the addition of one letter and a gTLD. Adding a single letter to create a misspelling of a mark is insufficient to negate confusing similarity. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”). Also, the addition of a gTLD is irrelevant in determining confusing similarity. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Here, Complainant argues that the disputed domain name differs from the ECOLAB mark only in the addition of the letter “i” and the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <ecoliab.com> 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ECOLAB trademark and to use it in its domain name, making only a minor spelling alteration that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the disputed domain name on September 11, 2019;
(c) Respondent uses emails based on the domain name to further a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent is not commonly known by the <ecoliab.com> domain name and is not licensed or authorized to use Complainant’s ECOLAB mark. Where a response is lacking, WHOIS information can be used to determine whether a respondent is commonly known by a disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information of record lists the registrant as “Jason Skolovo,” and no available information suggests that Respondent is licensed or otherwise permitted to use the mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather uses emails based on the domain name to further a phishing scheme. Use of emails based on a disputed domain name to impersonate a Complainant is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. 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 purportedly from agents of complainant to be neither 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)). Here, Complainant provides copies of emails in which the Respondent uses email addresses related to the <ecoliab.com> domain name to pass itself off as Complainant and solicit information from Complainant’s customers. See Compl. Ex. D. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant argues that Respondent’s use of typosquatting is not a nominative fair use of the <ecoliab.com> domain name. Acts of typosquatting can provide additional evidence that a respondent lacks rights and legitimate interests in a disputed domain name. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant notes that the disputed domain name is only one letter off from Complainant’s ECOLAB mark. Thus, as the Panel agrees that typosquatting is present, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Secondly, Complainant argues that Respondent’s use of typosquatting is further evidence of bad faith. Typosquatting alone can be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Gap Inc. and its subsidiary, Old Navy (Apparel), LLC v. Jiri Capcuch, FA1405001562139 (Forum July 2, 2014) (“Respondent adds an additional letter ‘v’ to Complainant’s OLD NAVY mark in the <oldnavvy.com> domain name, a classic example of typosquatting. Respondent’s typosquatting is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii).”). Complainant notes that the disputed domain name differs by only one letter from Complainant’s ECOLAB mark. Thus, as the Panel agrees that typosquatting is present, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark as seen by Respondent posing as Complainant through email. While constructive knowledge is not sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark can show bad faith registration and use. 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.”). Actual knowledge can be found from a respondent’s use of emails to impersonate a complainant. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant provides copies of Respondent’s emails that show use of Complainant’s exact mark. See Compl. Ex. D. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the mark and finds bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ECOLAB mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ecoliab.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 19, 2019
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