Leidos, Inc. v. Greg Tapper
Claim Number: FA2004001892949
Complainant is Leidos, Inc. (“Complainant”), represented by Kandis M. Koustenis of Bean, Kinney & Korman P.C., Virginia, USA. Respondent is Greg Tapper (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leidos-inc.com>, registered with NameCheap, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2020; the Forum received payment on April 20, 2020.
On April 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <leidos-inc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@leidos-inc.com. Also on April 28, 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 May 19, 2020, 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, Leidos Inc., is an American defense, aviation, information technology, and biomedical research company that provides scientific, engineering, systems integration and technical services. Complainant has rights in the LEIDOS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,937,101, registered Oct. 21, 2014). See Compl. Ex. 3. Respondent’s <leidos-inc.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s LEIDOS mark, simply adding a hyphen, the generic term “inc” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <leidos-inc.com> domain name. Respondent is not licensed or authorized to use Complainant’s LEIDOS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in connection with an email phishing scheme. Additionally, Respondent uses the disputed domain name to resolve to a site which contains pay-per-click advertisements.
Respondent registered and uses the <leidos-inc.com> domain name in bad faith. Respondent uses the domain name to impersonate Complainant in order to acquire personal and private information from consumers through a phishing scheme. Respondent is attempting to attract Internet users to its website which resolves to pay-per-click advertisements. Finally, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the LEIDOS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in defense, aviation, information technology, and biomedical research that provides scientific, engineering, systems integration and technical services.
2. Complainant has established its trademark rights in the LEIDOS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,937,101, registered Oct. 21, 2014).
3. Respondent registered the <leidos-inc.com> domain name on April 6, 2020.
4. Respondent uses the disputed domain name in connection with an email phishing scheme and causes the disputed domain name to resolve to a site which contains pay-per-click advertisements.
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 it has rights in the LEIDOS mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 4,937,101, registered Oct. 21, 2014). See Compl. Ex. 3. 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 evidence of its registration of the LEIDOS mark with the USPTO. Therefore, the Panel finds that Complanant 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 LEIDOS mark. Complainant argues that Respondent’s <leidos-inc.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s LEIDOS mark, with the mere addition of a hyphen, the generic word “inc” and the “.com” gTLD> Adding hyphens, generic words, and a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark per Policy ¶ 4(a)(i). See UBS AG v. Jouet Daniels, FA 1783500 (Forum May 30, 2018) (“Addition of hyphens does not distinguish a domain name from a mark per Policy ¶ 4(a)(i).”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i)”). Complainant notes that the only differences between the disputed domain and the mark are the additions of a hyphen, the generic word “inc” and the “.com” gTLD. Thus, the Panel finds that the disputed domain name is confusingly similar to the LEIDOS 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 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”).
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 LEIDOS trademark and to use it in its domain name, adding a hyphen and the generic word “inc” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <leidos-inc.com> domain name on April 6, 2020;
(c) Respondent uses the disputed domain name in connection with an email phishing scheme and causes the disputed domain name to resolve to a site which contains pay-per-click advertisements;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <leidos-inc.com> domain name because Respondent is not authorized or licensed to use Complainant’s LEIDOS mark and is not commonly known by the disputed domain name. Where a response is lacking, 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 notes “Greg Tapper” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the LEIDOS mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name in connection with an email phishing attempt. Using a disputed domain name with email to deceive recipients into divulging personal or financial information may not be a bona fide offering of goods or services 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)”). Here, Complainant claims Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing e-mails, presumably designed to solicit information under false pretenses. Complainant provides a screenshot of the email sent by Respondent, posing as the Complainant’s CEO. See Compl. Ex. 5. Therefore, the Panel finds Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent uses the domain name to resolve to a website containing pay-per-click advertisements and as further evidence Respondent does not use the domain name in a bona fide manner. Use of a disputed domain name to resolve to a site displaying pay-per-click advertisements generally does not qualify as a bona fide offering of goods or services. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering”). Here, Complainant has provided screenshots of Respondent’s web page which displays a commercial parking page that includes sponsored links to, among other goods and services, “Products,” “Company,” “Manufacturing,” and “Services.” See Compl. Ex. 6. The Panel agrees with Complainant that this 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).
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.
First, Complainant argues that Respondent has registered and uses the <leidos-inc.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute 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). Here, Complainant claims Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing e-mails, presumably designed to solicit information under false pretenses. Complainant provides a screenshot of the email sent by Respondent, posing as the Complainant’s CEO. See Compl. Ex. 5. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant submits that Respondent uses the disputed domain name to misdirect users to a commercial website which hosts advertisements and links to third-party sites. Use of a confusingly similar domain name to benefit commercially via, pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees”); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).Complainant has provided screenshots of Respondent’s website which features advertisements and links to third-party websites. See Compl. Ex. 6. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent has actual and/or constructive knowledge of Complainant’s rights in the LEIDOS 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 be shown by use of a confusingly similar domain name in direct competition with a complainant, bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights due to the fame of the LEIDOS mark, Respondent’s use of the mark in its entirety, and Respondent’s use of the domain name which features information directly sourced from Complainant’s own site. As the Panel agrees, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, 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 LEIDOS 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.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leidos-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 20, 2020
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