Chem-Trend Limited Partnership v. david wayn
Claim Number: FA2002001883922
Complainant is Chem-Trend Limited Partnership (“Complainant”), represented by Elizabeth Brock of Harness, Dickey & Pierce PLC, United States. Respondent is david wayn (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chemtrend.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 20, 2020; the Forum received payment on February 20, 2020.
On February 21, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <chemtrend.org> 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 February 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2020 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@chemtrend.org. Also on February 25, 2020, 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 March 18, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <chemtrend.org> domain name is confusingly similar to Complainant’s CHEM TREND mark.
2. Respondent does not have any rights or legitimate interests in the <chemtrend.org> domain name.
3. Respondent registered and uses the <chemtrend.org> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, Chem-Trend Limited Partnership, manufactures chemical specialty products. Complainant holds a registration for the CHEM TREND mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 885,691, registered Feb. 10, 1970).
Respondent registered the <chemtrend.org> domain name on November 18, 2019, and uses it to impersonate Complainant in furtherance of an e-mail 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 Panel finds that Complainant has rights in the CHEM TREND mark under Policy ¶ 4(a)(i) based upon registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <chemtrend.org> domain name incorporates Complainant’s CHEM TREND mark, removes the space and adds the “.org” gTLD. These changes do not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”). Accordingly, the Panel finds that Respondent’s <chemtrend.org> domain name is confusingly similar to Complainant’s CHEM TREND mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent does not have rights or legitimate interests in the <chemtrend.org> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s CHEM TREND mark. The WHOIS information of record lists the registrant as “david wayn.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus Respondent has no rights under Policy ¶ 4(c)(ii). 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.); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant claims that Respondent fails to use the <chemtrend.org> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use the disputed domain name. The failure to make active use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name, which resolves to an error message. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent lacks rights and legitimate interests in the <chemtrend.org> domain name because Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent email scheme. The use of an email address associated with a disputed domain name to pass off as a complainant in furtherance of phishing is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Complainant claims that Respondent registered the disputed domain name to pose as one of Complainant’s employees in order to provide false banking information to Complainant’s customers. Complainant provides an English translation of emails between Respondent and Complainant’s customers. The Panel finds that Respondent’s use of the disputed domain name is further evidence that it lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <chemtrend.org> domain name in bad faith. Specifically, Complainant claims that Respondent has a history of registering infringing domain names in bad faith. Previous registration of domain names containing registered marks can be evidence of bad faith under Policy ¶ 4(b)(ii). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites). Additionally, past decisions in which a respondent has had its domain name transferred can serve as evidence of bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides a reverse WHOIS search for Respondent’s email address, showing a number of potentially infringing domain names registered by Respondent. Complainant also provides a copy of a previous case involving a domain name transfer and where the respondent “David Wayne,” the same as Respondent “david wayn” in this case. The Panel finds that this evidence establishes a pattern of bad faith registration, and Respondent registered and uses the <chemtrend.org> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent disrupts Complainant’s business by impersonating Complainant in an e-mail phishing scheme. The use of a disputed domain name to impersonate a complainant in furtherance of a fraudulent scheme constitutes bad faith pursuant to Policy ¶ 4(b)(iii). 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)”). Accordingly, the Panel finds that Respondent’s phishing scheme demonstrates bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s use of Complainant’s mark in its attempt to impersonate Complainant through email displays actual knowledge of Complainant’s rights in the CHEM TREND mark. The Panel agrees and finds that Respondent registered and uses the <chemtrend.org> domain name in bad faith under Policy ¶ 4(a)(iii). 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.”).
The Panel finds that Complainant has satisfied 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 <chemtrend.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 19, 2020
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