Isosceles Holdings, LLC v. popola ole
Claim Number: FA2003001889151
Complainant is Isosceles Holdings, LLC (“Complainant”), represented by Michael R. Reinemann, Esq. of Cesari and McKenna LLP, USA. Respondent is popola ole (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <responseeteam1.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2020; the Forum received payment on March 20, 2020.
On March 24, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <responseeteam1.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 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@responseeteam1.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 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Isosceles Holdings, LLC, through an affiliated company – Response Team 1 Holdings, LLC – is a national leader in emergency response, property reconstruction and renovation services. Complainant operates 25 locations in 17 states and has completed nearly 200,000 cleaning projects and over 50,000 emergency response projects for its customers. Complainant has rights in the trademark RESPONSE TEAM 1 based upon its use in commerce starting in 2013 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2014. Complainant also operates its website at the address www.responseteam1.com. Respondent’s <responseeteam1.com> domain name, registered on January 10, 2020, is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s RESPONSE TEAM 1 mark, adding only an extra “e” within the mark and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <responseeteam1.com> domain name. Respondent is not licensed or authorized to use Complainant’s RESPONSE TEAM 1 mark and is not known by the disputed domain name. Additionally, Respondent does not have a website at the disputed domain name and does not use it for any bona fide offering of goods or services or make a legitimate noncommercial or fair use of the name. Instead, Respondent has sent phishing emails from an address that uses the disputed domain name.
Respondent registered and uses the <responseeteam1.com> domain name in bad faith. Respondent uses the domain name to impersonate Complainant in an effort to have third parties pay funds that are owed to Complainant redirected to a bank account designated by Respondent. Additionally, by registering a domain name that incorporates a minor misspelling of Complainant’s RESPONSE TEAM 1 mark, Respondent is engaged in typosquatting. Respondent also fails to make an active website use of the domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the RESPONSE TEAM 1 mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 RESPONSE TEAM 1 mark based upon its registrations of the mark with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides a copy of its registration certificate. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <responseeteam1.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s RESPONSE TEAM 1 mark, adding only an extra letter “e” and the “.com” gTLD. The addition of a single letter and a gTLD may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i)”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names”). Thus, the Panel finds that the disputed domain name is confusingly similar to the RESPONSE TEAM 1 mark under 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 <responseeteam1.com> domain name because Respondent is not licensed or authorized to use Complainant’s RESPONSE TEAM 1 mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H - D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. 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). The WHOIS information of record identifies the registrant as “popola ole” and no information in the record suggests that Respondent is known otherwise or that Complainant has authorized Respondent to use the RESPONSE TEAM 1 mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or make a legitimate noncommercial or fair use of the name as Respondent does not have a website at the disputed domain name. Failure to make active use of a domain name does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)”). Here, Complainant has provided a screenshot of Respondent’s inactive web page which states “this site can’t be reached.” The Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Finally, though not specifically argued by Complainant under this element of the Policy, the evidence indicates that Respondent attempts to impersonate Complainant as part of an email phishing scheme. Use of an email address associated with a disputed domain name to pass oneself off as a complainant in furtherance of phishing activity is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(ii) or (iv). 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)”). Here, Complainant asserts that Respondent uses an email address associated with the disputed domain name to impersonate one of Complainant’s accounts receivables managers and to send phishing e-mails to Complainant’s customers that are designed to solicit payments to a different bank account than that used by Complainant. Complainant provides a copy of one such email and payment instructions sent by Respondent. Thus, the Panel finds that Respondent’s use of the disputed domain name in furtherance of a phishing scheme indicates that it lacks rights and legitimate interests per Policy ¶¶ 4(c)(ii) and (iv).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the RESPONSE TEAM 1 mark when registering the disputed domain name. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can form the foundation upon which to build a case of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it”). Actual knowledge of a mark can be established by showing the use made of it. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 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 argues that because Respondent included a very close imitation of Complainant’s actual address, domain name, and logo within the fraudulent emails, that Respondent undoubtedly knew of Complainant’s rights in the RESPONSE TEAM 1 mark prior to registering the disputed domain name. The Panel agrees.
Next, Complainant argues that Respondent has registered and uses the <responseeteam1.com> domain name in bad faith. Complainant alleges that Respondent attempts to defraud recipients of its phishing emails. Specifically, Complainant argues that Respondent is attempting to impersonate and pass itself off as Complainant as part of an email phishing scheme for commercial gain. Use of a domain name in this manner constitutes bad faith pursuant to Policy ¶ 4(b)(iii) and/or (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 Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As previously mentioned, Complainant claims that Respondent used an email address associated with the disputed domain name to impersonate one of Complainant’s employees and to send phishing emails to Complainant’s customers asking that they send future payments to a “new [bank] account”. Complainant provides a copy of one such email sent by Respondent regarding the fraudulent scheme. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Furthermore, Complainant contends that Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can be evidence of bad faith per Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii)”). Complainant asserts that Respondent merely added an extra letter “e” to the RESPONSE TEAM 1 mark in creating its <responseeteam1.com> domain name. Thus, the Panel finds that Respondent’s addition of a single letter in Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent fails to make an active use and is passively holding the disputed domain name. However, in light of the above findings of bad faith the Panel does not feel the need to analyze this particular claim.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <responseeteam1.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 20, 2020
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