Ecolab USA Inc. v. (name redacted)
Claim Number: FA2003001888902
Complainant is Ecolab USA Inc. (“Complainant”), represented by Elizabeth M. Stafki, Texas, USA. Respondent is (name redacted) (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecolab-s.com>, registered with Tucows Domains Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2020; the Forum received payment on March 19, 2020.
On March 19, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <ecolab-s.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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@ecolab-s.com. Also on March 24, 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 April 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Ecolab USA Inc., is a company offering water, hygiene, and energy technologies and services.
Complainant has rights in the ECOLAB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <ecolab-s.com> domain name is identical or confusingly similar to Complainant’s ECOLAB mark as it contains the ECOLAB mark in its entirety and merely adds a hyphen and the letter “s” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interest in the <ecolab-s.com> domain name. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s ECOLAB mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent does not make any active use of the at-issue domain name but instead uses the domain name in furtherance of an e-mail phishing scheme.
Respondent registered and uses the <ecolab-s.com> domain name in bad faith. Respondent disrupts Complainant’s business by impersonating Complainant and typosquatting in furtherance of a phishing scheme. Respondent uses a privacy service for a commercial website and provides false contact information in the Whois Database. Finally, Respondent had actual knowledge of Complainant’s rights in the ECOLAB mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ECOLAB mark through the registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ECOLAB trademark.
Respondent uses the at-issue domain name to host email pretending to originate from Complainant in furtherance of defrauding third parties.
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”).
Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement” (emphasis added). The nominal registrant for the at-issue domain name, that is the person listed in the WHOIS contact information, is one of Complainant’s employees. However Complainant indicates that the real respondent in interest is not the nominal respondent (the WHOIS contact name). Rather, the actual registrant of the at-issue domain name falsified the WHOIS contact registration information in furtherance of a scheme to use the domain name to masquerade as Complainant and perpetrate fraud. The real registrant of the domain name in effect stole the identity of Complainant’s employee and used the employee’s name when it registered the <ecolab-s.com> domain name presumably to lend credence to the illusion that the domain name was associated with, or sponsored by, Complainant. Complainant in the interest of its employee’s privacy interests and in accordance with Forum Supplemental Rule 15(b) requested in its Complaint that the name of the Respondent be redacted in the published version of this decision.
Pursuant to Policy ¶ 4(j) all decisions under the Policy are to be published over the internet in-full, except that a panel may determine, in exceptional cases, that portions of its decision be redacted. Here, the Panel finds that the real registrant of the at-issue domain name misappropriated the identity of one of Complainant’s employees and registered the at-issue domain name under such name. The identity theft makes this an “exceptional case.”
Publication of this decision and therein disclosing Complainant’s employee as Respondent Supplemental Rule 1(d) when the employee is actually not the real registrant of the domain name will place the employee in a false or misleading light. The employee will be publically depicted as the respondent in an adverse UDRP proceeding. He or she will be subject to any negative publicity from the publication of the decision and its content, when in fact the named employee is the victim of identity theft and in no way responsible for the actions of the real respondent in interest being discussed in the decision. In fact, false light is a tort. The Panel may be considered remiss or even culpable in publishing the name of the nominal respondent knowing, or having reason to know, that the nominal respondent’s identification by his or her proper name in the relevant WHOIS contact information is baseless and the result of identity theft.
On the other hand, by redacting the name of the Respondent, Complainant’s employee will not be subject to false light from the publication of this decision. Further, since the order of this Panel granting or denying relief to Complainant is directed to the at-issue domain name’s registrar rather than to Respondent, and thus the name of the Respondent, real or nominal, is irrelevant to effectuating the Panel’s order, there is no reason to preserve the falsification of the WHOIS contact information in the decision. Therefore the Panel concludes that the nominal Respondent’s proper name should be redacted from the instant decision and its caption, and that such redaction is to also appear in any republication, list, listing, or reference to such decision that is open to public scrutiny.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).
Respondent’s <ecolab-s.com> domain name contains Complainant’s ECOLAB trademark followed by a hyphen and the letter “s” all followed by the top level domain names “.net.” The differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <ecolab-s.com> domain name is confusingly similar to Complainant’s ECOLAB trademark. See Ancestry.com Operations Inc. v. Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev, FA 1327838 (Forum July 13, 2010) (finding the respondent’s <familytreemakers.com> domain name confusingly similar to the complainant’s FAMILY TREE MAKER trademark because the addition of the letter “s” was insufficient to distinguish the domain name from the mark); see also Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “(name redacted).” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the <ecolab-s.com> domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See 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); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally and as discussed below regarding bad faith, Respondent uses the <ecolab-s.com> domain name to host email designed to pass itself off as originating from Complainant. The bogus email is part of a fraudulent invoicing scheme. As part of its ruse, Respondent goes to great lengths to imitate the form of Complainant’s email by referencing Complainant’s intellectual property, as well as other indicia of Complainant’s business, so as to perfect the illusion that the email originates from Complainant when it does not. Respondent’s use of the confusingly similar domain name in this manner to pass itself off as Complainant in furtherance of a fraudulent scheme is 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). 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)); see also, Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <ecolab-s.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and interests, Respondent used the <ecolab-s.com> domain name to host an email address for use in connection with a scheme that involves Respondent masquerading as Complainant in email that ultimately attempts to fraudulently invoice third parties and fraudulently uncover private financial information. Respondent’s antics are disruptive to Complainant’s business and are intended to benefit Respondent financially. Respondent inappropriately usurps the goodwill inherent in Complainant’s mark towards such end. Importantly, Respondent’s use of the domain name in this manner shows Respondent’s bad faith under Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(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 Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)).
Next, Respondent’s registration of false contact information in the Whois Database creates a presumption of bad faith registration and use of the <ecolab-s.com> domain name. Registering false identity information on the Whois Database shows Respondent’s bad faith under Policy ¶ 4(a)(iii). CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
Complainant claims Respondent is engaging in typosquatting; the Panel somewhat disagrees. Respondent formed the at-issue <ecolab-s.com> domain name, inter alia, by concatenating “-s” to Complainant’s trademark and adding “.com.” Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into another’s trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name’s target trademark; and/or 2) in viewing the domain name will confuse the domain name with its target trademark. The registrant then may use the confusion to inappropriately capitalize on the target mark’s goodwill. As Complainant points out, typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). However, in our case the addition of “-s” to Complainant’s trademark would not likely be the result of inadvertently typing the ECOLAB mark. Likewise, although the domain name is confusingly similar to Complainant’s ECOLAB trademark, the addition of the “-s” to Complainant’s mark is better characterized as an addition to the mark rather than a misspelling or mistyping. Nevertheless, and as Complainant points out, it is a hallmark of UDRP bad faith registration and use that, as here, that a respondent registers and uses a domain name to confuse third parties into believing that the domain name is associated with, or sponsored by, its target trademark.
Finally, Respondent registered its <ecolab-s.com>domain name with actual knowledge of Complainant’s ECOLAB trademark. Respondent’s knowledge of Complainant’s mark is evident from the notoriety of the ECOLAB mark, as well as from Respondent’s scheme to improperly exploit the mark in an email based scam as discussed above. Under the circumstances, it is inconceivable that Respondent was unaware of Complainant’s trademark when it registered the <ecolab-s.com> domain name. Respondent’s actual knowledge of Complainant’s rights in the ECOLAB mark prior to registering the at-issue <ecolab-s.com> domain name further urges that Respondent registered such domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED, and further that Complainant’s request that the name of Respondent be redacted in this decision as published is likewise GRANTED.
Accordingly, it is Ordered that the <ecolab-s.com> domain name be TRANSFERRED from Respondent to Complainant and it is further ordered that the proper name of Respondent in this proceeding shall not be publically disclosed either in this decision or otherwise.
Paul M. DeCicco, Panelist
Dated: April 20, 2020
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